Principles of Plant Genetics and Breeding

260 CHAPTER 15
(e.g., USA) allow a grace period during which an
invention that has already been introduced to the public,
under certain conditions, could still be patented.
5 Obviousness. This is a very difficult criterion to
satisfy. The invention or product should neither be
expected nor obvious. A person knowledgeable in
the subject matter (skilled in the art) should not be
able to readily figure out how to piece together the
component parts to make the product (Section 103
of the US Patent Law).
Applying for a patent
In the USA, patent applications may be submitted to
the Patent and Trademarks Office, US Department of
Commerce, Washington, 20231 DC. Copyright applications
may be submitted to the US Copyright Office,
Library of Congress, Washington, 20559 DC. In Europe,
applications may be submitted to the European Patent
Office. The services of patent attorneys may be engaged
in preparing and filing an application. An applicant must
define the problem or objective addressed by the invention
very clearly and in detail. There are certain general
steps involved in applying for a patent:
1 Filing fee. An applicant for a patent is required to pay
a fee for the processing of the application.
2 Search and examination. The patent examiner will
conduct a “prior art” search to ascertain the novelty
and non-obviousness of the invention. The claims
defining the scope and monopoly being sought are
rigorously examined. The examiner may accept or
reject the application based upon the search and
examination results. The applicant has the right to
ague against an adverse judgment, or to amend the
claims to the satisfaction of the examiner.
3 Publication. Successful applications will be published
along with the claims of the applicant.
4 Maintenance fees. Most countries require a successful
applicant to pay a periodic maintenance fee to
guarantee or prevent the patent from lapsing.
Exploiting intellectual property
Apart from exploiting an intellectual property personally,
the owner of the patent has the right to sell, license,
or give it away.
Assignment
A patent or patent application of an invention may be
sold or assigned to another party just like a piece of
property. The method of payment for use or acquisition
of the property is entirely up to the owner of the property
(e.g., one-time payment or periodic royalties).
License
Rather than outright sale, the intellectual property may
be licensed to another party according to specified terms
and conditions. The license agreement usually guarantees
the licensor royalties from the licensee for use of the
invention. License agreements lay out limitations to the
extent of exploitation of the invention permitted, and
may limit the application of the invention to certain
uses. In this era of genetic engineering, a wide variety of
genes have been cloned. Also, various biological tools
(e.g., vectors, promoters) have been developed. Some
of those undertakings were expensive and tedious.
Rather than reinvent the wheel, it might be easier to pay
a fee to use the technology.
Freedom of use
Freedom of use consideration may hinder a patent
from being exploited without infringing upon existing
patents. Such restrictions on free exploitation of an
inventor’s patent may derive from the scope of the
patent. Scopes that are too narrow are susceptible to
such infringements. An example of such a situation
involving freedom of use may arise when an inventor
patents a process that requires another patented compound
in order to exploit the invention.
Patents in plant breeding and biotechnology:
unique issues and challenges
Patenting organisms
Patenting in the biological sciences or non-empirical sciences
is very challenging, especially when life is involved
(e.g., organisms). Whereas it is not easy to duplicate and
proliferate a mechanical invention, it is easy to reproduce
an organism (just like computer software or copyrighted
music). Consequently, the early application of
patent laws to biology tended to be strongly and broadly
interpreted in favor of inventors.
Generally, it is easier to satisfy the patent requirements
when inventions are the results of empirical
discovery as obtains in the pharmaceutical and agrochemical
industries. It is easy to lay claim to the discovery
of a compound with potential for use as an active ingredient
in pesticides, antibiotics, and other therapeutics.