Can I patent that?

The color is superb. The growth habit is ideal. It’s unlike the existing plants on the market. You’ve been working on this begonia for years, and you’ve finally got a plant you can stand behind, the likes of which the industry has never seen. But then you ask yourself the question: Can I patent this?

There have been 28,191 plant patent applications filed through the United States Patent and Trademark Office (USPTO), and 24,021 granted since 1963. While plant patents make up a very small portion of the overall number of patents granted in the U.S. (there were 25,986 design patents granted in 2015 alone), their importance within the horticulture industry has grown in recent years.

“A plant patent is granted by the Government to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state,” according to the USPTO.

The breeding industry has found itself caught up in a few legal battles over patented plants in the past year. Questions of ownership and rights to the plant pervade the arguments, and litigation is imminent for some. If you’re thinking about patenting a plant you’ve developed or are working on, this is your opportunity to learn more about the process and how to protect yourself. In future issues, we’ll delve more into other types of plant protection, such as Plant Breeder’s Rights, utility patents, trademarks and copyrights.

“So I have this begonia…”

If you have a plant you’re interested in legally protecting, you should ask yourself the following questions to determine how to proceed and if you should file a plant patent application.

Why do I want to patent this plant?

What is it about this plant variety that makes it special? “Typically, breeders are trying to select for traits which they feel will meet some long-felt need within the industry,” says Plant Patent Agent Sam McCoy of Perennial Patent Co. in Mt. Pleasant, S.C. “Depending on the plant, this could be improved vigor, disease/pest resistance, bloom habits, unique flowers (size, shape, color, etc.), unique growth habits, and so on.” In general, McCoy says, every breeder strives to create varieties with both improved aesthetics and performance, but the former is more important for retail plants and the latter for landscape plants. However, one thing is true for both: “With the number of plant patent applications growing every year, the competition is getting stiffer, which means breeding criteria [is becoming] more stringent,” says McCoy.

No matter the particular set of qualities your begonia brings to the table, the main reason to patent it (besides posterity) is for financial gain. “You’re trying to realize a return on your investment — your investment being your time, effort and energy and money in the breeding program,” McCoy says. “You saw the potential in the mutation. You pulled it aside, you coddled that thing through those initial stages, grew it out, compared it to others on the market. And so there’s some energy and effort that goes into that.”

How have I reproduced this plant?

If you are seeking a plant patent for your new begonia, you must have discovered or invented the variety and asexually reproduced it. It cannot be a plant produced from a tuber or a plant “found in an uncultivated state,” according to the USPTO. Seed-produced varieties fall under a different category and first-generation hybrids are ineligible.

Does my plant qualify for a plant patent?

There are two other areas to look at to determine if this plant can be patented (besides the asexual reproduction method requirement mentioned earlier): whether the plant meets certain characteristics requirements, and if the plant has been previously publicly disclosed.

First, the characteristics: Your begonia variety must be new, distinct, uniform and stable. In other words, it must be a new creation, different from existing plants on the market, uniform across production and stable from generation to generation. For example, regarding the terms uniform and stable, “In a population of propagated plants of your new variety, the vast majority needs to be identical,” says Cassy Bright, a plant patent agent in California. “Stability means if you have a variegated variety, when you propagate it, it continues to come back variegated; it doesn’t jump around with a lot of mutations.”

Secondly, what is your plant’s public disclosure status? McCoy says a public disclosure can be one of many actions, including: “a sale of any kind, an offer for sale, showing it at a trade show, putting it in your catalog/website, [or] any disclosure where the public could go out and find information on this patented plant.”

Since the passing of the America Invents Act in 2011, the U.S. went from being a “first-to-invent” to a “first-inventor-to-file” country, putting it in line with most of the rest of the world. Under the new system, whomever files the patent application first can become the patent owner. That means that if you publicly disclose your plant before filing, you risk losing patentability. In addition, the new system considers any public disclosure outside of the U.S. the same as one made within our borders.

“The most important thing I tell people is: Don’t show it to anybody, particularly anybody from outside of your operation,” McCoy says. “Then get with a practitioner. Under this ‘first-inventor-to-file’ system, you need to file before you disclose in any way.”

Who patented this plant?

If you collaborated with another person to “invent” this begonia, you can be co-inventors. However, if you plan to patent it in the U.S. and other countries, “it has to be the exact same inventorship,” says McCoy. “If it’s joint inventors in Europe it has to be the same joint inventors here in the United States.”

Is this plant already patented?

Just like with other patents, breeders need to conduct some preliminary research to determine if the plant in question has already been patented. “They should look [it up] on Google, ask around as much as they can and have access in the industry to find out,” Bright says. “[That search] is a standard part of the commercial process.”

Where am I planning to patent this plant?

For the purposes of this article, we’re looking at the USPTO patent process. However, it’s important to keep in mind that there are certain limitations on the time you have to extend your plant protection to other areas of the world. “Let’s say you live in the United States and you file your plant patent, you will have a certain amount of time to take that intellectual property filing and apply for an international patent in another country,” says David Postolski, a patent attorney at Gearhart Law in N.J. “For a patent, one year after you file, you will have the ability to start the international patent process. If you miss that opportunity, then you lose the opportunity to file your patent in that country.”

Keep in mind that if some part of the plant’s production will take place in another country, you should consider patenting there as well. “If you have the ability to file in another country, we do suggest it for sure because information is global,” Postolski says.

For plant protection in many other countries, breeders can file using the standardized International Union for the Protection of New Varieties of Plants system, established in 1961. Read more at upov.int

For other intellectual property, such as trademarks and copyrights, that timeframe may be different, so it’s wise to consult a professional who is well-versed in the international laws.

My begonia has patentability. Now what?

Seek advice from a professional.

Once you’ve decided to pursue a plant patent, you can seek assistance to make the process go smoothly. Your two main options are a certified patent agent (such as Bright or McCoy) or a patent attorney (such as Postolski) for patent prosecution. “You have to have a scientific background, apply to take the patent bar, pass the [patent] bar, and then you can file patents for other people [as a patent agent],” says Bright.

Both patent agents and patent attorneys are qualified to assist you with any or all of the application. However, a patent attorney has also gone to law school and passed the state bar exam in order to be able to practice law. This means that he or she can represent you in a court of law should you have issues with patent infringement or other legal problems with the patent. As such, a patent attorney’s services tend to be significantly more expensive.

Start working on the application.

According to the USPTO, plant patent applications include information such as the title of the invention, cross references to related applications, the Latin name and genus of the plant, variety denomination and a very detailed botanical description, among others. And of course, you must state the claim in your application. “With a plant patent, by law you can only have one claim, and that is to the full genome of the plant described within the patent,” McCoy says.

The application cost depends on the type of plant patent and the size of your company, McCoy says. Check the current application fee schedule at 1.usa.gov/28OFn6r

How long is this going to take?

It takes about 18 months from the time you submit your plant patent application to when the patent is granted, says Postolski. The patent is valid for 20 years.

Patent granted!

What can I do with my patent?

“A patent is a form of intellectual property, [which is] like real property and personal property,” Postolski says. “They’re ideas that come out of your head, a la intellect, but they’re a property in that the federal government gives you the exclusive right to exclude others from your property.” Because a patent (or trademark or copyright, for that matter) is considered to be a form of property, it can be willed, leased (via a license), sold, used as collateral for a loan or even used to attract investments from venture capitalists. So, while to some it may seem like a simple protection, a plant patent can be a resource for the breeder. “It has a lot of value for sure,” Postolski says. “It’s definitely an investment.”

How do I protect my newly acquired plant patent?

“The patent office was established in the U.S. to promote commerce,” says Bright. “It’s a commercial function of the government. They give the means to enforce those intellectual property rights, but they stay out of the enforcement [aspect].” It’s up to you to protect your patent rights.

First, communicate your new plant patent to the industry. If you “recognize that someone might be infringing your [plant patent], it is now your responsibility to send them a ‘demand letter,’ as we call it, similar to a cease-and-desist letter for a trademark,” Postolski says. You let the involved parties know that this begonia can only be propagated with your authorization, license or purchase. “It’s the responsibility of the breeder or the breeder’s agent” to enforce the patent, McCoy says.

But how can you find out about illegal propagation? “There are ‘watch services,’ as we call them, where you can pay a professional company to see if people are infringing your product, growing your plant, or not getting the adequate permissions,” says Postolski. “They can notify you and you [can] take the proper action.”

Communicate to licensees, brokers, propagators, finished plant growers and anyone else involved in the sale or production of the plant what information is required on the plant tags and labels, such as the plant patent number or PPAF and “Propagation Prohibited,” for example.

What happens to a plant patent after 20 years?

Once a plant patent is granted, it’s valid for 20 years and isn’t renewable. “Once it’s expired, it’s expired,” Bright says. “You can’t extend the life of your patent. … The government protects you for 20 years in a certain way in exchange for, in the future [that knowledge] going into the public domain.”

Why should I care more about patenting my plant now than before?

Getting a plant patent takes time and effort, but can be a worthwhile move for your bottom line. It’s no longer enough to put your name on a new plant and trust that no one else will grow it. “Our industry has woken up and realized how important intellectual property is to a business and to an industry,” McCoy says.

“Don’t get me wrong. You don’t have to do this,” says Postolski. “[Obtaining a] patent is ultimately a choice an entrepreneur or a business makes or for defensive, offensive or strategic reasons. But I err on the side of, if you ever want the right to say that you invented something first, or to try to prove that someone is infringing you, this is the only game in town. This is what you have to do, like it or not.”

The horticulture industry is evolving as more branded programs and marketing groups make their way into it. “We’re catching up with a lot of other industries as far as [branding] goes,” McCoy says. “The tide has changed, and [the idea of patented and branded plants] is a part of our industry that’s probably not going to change or go away.”

For more information about plant patents, consult a patent agent or attorney.

Cassie Neiden contributed to this article.