Principles of Plant Genetics and Breeding

the key functions of a patent is to define the scope of
the protection. Ideas and suggestions, no matter how
brilliant and creative, cannot be patented. Similarly,
mixtures of ingredients (e.g., medicines) are also
excluded, unless such mixtures produce synergistic
effects or some unique and unexpected advantage.
Defining the scope of protection is straightforward in
certain cases (e.g., a simple device) and very complex in
others (e.g., biotech inventions). There are five basic
classes of patentable inventions:
1 Compositions of matter. A new chemical entity
produced from the combination of two or more
compounds (common in pharmaceutical and agrochemical
research).
2 Processes or procedures. A series of steps that are
followed to synthesize a new compound or a new
method of making a product.
3 Articles of manufacture. Nearly every manmade
object.
4 Machines. Any mechanical or electrical apparatus or
device.
5 Improvements. Improvements on any of the previous
four categories.
Types of patents
Patents may be classified into three basic types – utility,
design, and plant. The duration of each of these patents
is 20 years.
1 Utility patent. A utility patent is one of the most
common and also most difficult patents to obtain.
The applicant is required to submit a comprehensive
description of how to make and use the invention,
including detailed drawings, where appropriate,
among other requirements. The scope of protection
includes the functional characteristics of machines,
electronic devices, manufacturing processes, chemical
compounds, composition of medical treatment, and
manufactured articles.
2 Design patent. A design patent may be sought for
the protection of the shape of ornamental or artistic
features of an article (e.g., unique shape of a bottle,
the grill of an automobile).
3 Plant patent. The plant patent protects the invention
or discovery of distinct and new plant varieties via
asexual reproductive methods.
National and international patents
Patent laws vary among the nations of the world.
National patents pertain to the applicant’s country of
ISSUES IN THE APPLICATION OF BIOTECHNOLOGY IN PLANT BREEDING 259
origin or operation. However, applicants may also seek
worldwide protection for an invention (e.g., from the
European Patent Convention (EPC)). The EPC allows
patent rights to be obtained in one or more European
countries that are party to the EPC by making a single
European patent application. If successful, the applicant
can then use the patents in the countries that the
applicant designated. International patents may be
obtained by filing a single patent and designating the
countries in which protection is desired. Within a
specified time limit, this single patent will be copied to
the designated countries where they will be processed as
national applications. Countries vary in the diligence
with which they honor and enforce patent laws. Patent
violations cost companies huge losses each year.
Sometimes, it takes political pressure to encourage the
enforcement of international patents.
Scope of patent protection
The applicant is responsible for defining the scope
of protection desired. However, there must be ample
evidence to justify the scope of protection being
sought. The scope of protection may be defined narrowly
or broadly, each scenario with its consequences.
Sometimes, in an attempt to prevent the competition
from copying the invention, an applicant may make
claims to encompass the embodiments of the invention
that were not existent at the time of the invention.
Such a practice favors the inventor to the disadvantage
of the competition. An example of a broad scope of
protection is one sought by Monsanto to protect its
highly successful herbicide, Roundup®.
Criteria for patentability
1 Conception. The applicant should be able to paint a
mental picture of the invention that is detailed enough
to allow a person knowledgeable in the subject to which
the invention relates to make and use the invention.
2 Reduction to practice. The inventor should make or
construct the invention and test it to demonstrate its
usefulness.
3 Utility. An invention must be useful (not merely
aesthetic) to the user. That is, the invention must take
some practical form (applicability).
4 Novelty. The invention must not be a copy or repetition
of an existing one. Among other things, it should
not have been known, published, or used publicly
anywhere previously. In the UK, an invention must
not have been in the public domain anywhere in the
world prior to application of a patent. Some countries