People often have many questions when it comes to understanding US plant patents so rather than explain the process in a narrative format, we are listing questions that are frequently asked.
How long does a protection for a plant patent last?
A plant patent is good for 20 years from the filing date (or sometimes the "Priority Date"). Since the "protection clock" is ticking once you file the application you will want to be as organized as possible so that the application process takes as little time as possible and so that you have more time alloted for the Issued patent.
Are there annuities, maintenance fees or additional government fees for a US plant patent after it issues?
No. That is a beauty of plant patents! They are almost the only form of plant protection that does not have regular fees after it is approved.
I've filed my application, now what?
Every US patent application requires an "Inventor Declaration" where the inventor(s) declare particular facts as they relate to a particular application. If this is not included at the time of filing, the patent office will request the document before you will receive a completely accurate Filing Receipt (which acknowledges that you filed the application - your application should be considered filed but the Filing Receipt will generally be "incorrect" in its inventor details.
The patent office will issue what is called a "Notice to File Missing Parts (NTFMP)." This very ominous sounding document is not as alarming as it sounds but if you ignore it, your application will go abandoned. You will "respond" to the NTFMP by submitting the signed Inventor(s) Declaration and a fee for not providing the declaration at the time of filing.
The patent office will then send a new and updated Filing Receipt to you if they are happy with the Inventor Declaration and all other application parts.
Money Saving Tip: Make sure your Inventor Declaration is submitted with the application and then you can avoid the government surcharge fee as well as any fees from the intellectual property management company or intellectual property law firm charged to your account in order to process this extra step.
Next comes waiting and then some more waiting. Fortunately plant patents move through the system more quickly than what we call a "utility" patent application (applications reserved for sexually reproduced plants and most all other inventions).
You may receive an Office Action in six months to a year and a half although not all applications receive office actions, especially if the plant is thoroughly and clearly described (which is a requirement of the US patent office). If the examiner is convinced they have everything they need, they will issue a Notice of Allowance as well as a request for a sizable Issue fee (at the time of this post, the fee ranges from $685 USD to $1370 USD). If all continues to go well, your application will grant and you will enjoy the full protections available for an issued US plant patent.
I've already sold my plant. Can I still get protection?
This is a thorny issue to be sure. In the U.S. we used to say you have a year "grace" period from the first sale or offer for sale before you had to file a patent application; however US patent laws are transition from "First to Invent" to "First to File" laws which is more akin to laws in other countries. The challenge is this law and the application of the law is still somewhat debatable. If you have already sold or offered your cultivar it is best to contact an experienced intellectual property practitioner as quickly as possible to obtain an answer more specific to your particular circumstances.
I am taking my new variety to a trade show but it will be for demonstration only and will not be for sale. Does this mean I will risk obtaining patent protection because I haven't filed my application first?
Yikes! This is another good and common question that is not easy to answer in a FAQ. Each circumstance is different and I always feel it is better to be "safe than sorry" so a quick conversation with an experienced patent professional is a good idea. FYI - be sure to give them all the details and don't leave anything to an assumption.
Does an attorney have to file the application?
No, they are not the only ones who can file and handle the application process through grant (what we call "prosecution"). The United States Patent Office allows Registered U.S. Patent Attorneys, Registered U.S. Patent Agents, and You, the Applicant to file and handle the entire application process.
Should I file a Provisional Application first for my Plant?
Generally, it is not necessary unless you have some one-year sales date that you have concerns about. "Provisional Applications" are often used for other application types (utility patents) to "get something on file" and generally the applications are not very complete. The Provisional application allows a year to get the rest of the application details in order, collect characteristic data, etc. and then file what is logically called a "Non-Provisional" patent application.
Unless there is a really good reason for it, provisional applications for plant patent applications do little more than cost you more money in government fees and attorney or agent preparation fees. The reason provisional applications provide little significant advantage is because unlike in other forms of patent protection, you can add as much new data to the application after you file it. If you are talking to an attorney, they will refer to this as "New Matter". There is no restriction on "adding new matter" to a plant patent application, in fact, it is often encouraged by the examiner.
For more information on U.S. Plant Patent Protection, please visit our other site