Patent It Yourself - PDF Archive

94 | PATENT IT YOURSELF
Design and Plant Patents
Design patent applications must cover a new, original,
and ornamental design for an article of manufacture, and
are examined in the same way and must pass the same
unobviousness test as utility patent applications, except
that the “better functioning” tests that are used to evaluate
unobviousness (see Section F, below) are not used, since only
the aesthetics of a design invention are relevant.
Plant patent applications are subject to the same legal
requirements as utility patent applications, except that
the statutory class requirement (first test) is obviously not
relevant: plants provide their own statutory class. Since
plant patents are relatively rare and are of very specialized
interest, I won’t go into detail except to set forth the
additional legal requirements for getting one. They are:
(1) the plant must be asexually reproduced; and (2) the
plant must be a new variety. These may include cultivated
sports, mutants, hybrids, and newly found seedlings, but
should not be a tuber, propagated plant, bacterium, or a
plant found in an uncultivated state. You may also obtain a
monopoly on a sexually reproduced plant under the Plant
Variety Protection Act. (For more information, see Chapter
1, Section B.)
Utility patents have been issued for man-made plants (or
elements of plants) since the late 1980s. These plants can
be reproduced either sexually (by seeds) or asexually (by
grafts, cuttings, or other human means). Utility patents have
also been issued for elements of plants, such as proteins,
genes, DNA, buds, pollen, fruit, plant-based chemicals,
and the processes used in the manufacture of these plant
products. To obtain a utility patent, the plant must be made
by humans and must fit within the statutory requirements
(utility, novelty, and nonobviousness). The patent must
describe and claim the specific characteristics of the plant
for which offensive rights are sought. Sometimes the best
way to meet this requirement is to deposit seeds or plant
tissue at a specified public depository. Many countries have
International Depository Authorities for such purposes.
Although a utility patent is harder and more timeconsuming
to acquire than a plant patent, a utility patent
is considered to be a stronger form of offensive right. For
example, a plant covered by a utility patent can be infringed
if it is reproduced either sexually or asexually. By contrast,
a plant patent can be infringed only if it is reproduced
asexually from the actual plant protected by the patent.
Since the utility patent owner can thoroughly prevent
others from making and using the invention, does this
mean the buyer of a patented seed cannot sell the resulting
plants to the public? No, because according to patent law,
the seed’s purchaser can sell the resulting plants but cannot
manufacture the seed line.
Inventor’s Commandment 6
One-Year Rule: Treat the “one-year rule” as holy. You
must file your regular or provisional patent application
within one year of the date on which your invention
(or any product that embodies it) is first published,
commercially or publicly used, sold, offered for sale,
disclosed to a group of people without restriction, or
allowed to be used by another without restriction. If
you wish to preserve your foreign rights and prevent
theft of your creation, file your patent application
before you publish details of or sell your creation.
Inventor’s Commandment 7
To evaluate or argue the patentability of any
invention, use a two-step process. First determine
what novel features (§ 102) the invention has over the
closest prior-art reference(s). Novelty can be a new
physical (hardware) feature, a new combination or
rearrangement of two separate old features, or a new
use of an old feature. Second, determine if the novelty
produces any new and unexpected results or otherwise
indicates unobviousness (§ 103).