CIOPORA Chronicle 2015

cousin, Larry. Larry Ludy also
knew that the material had come
from the USDA and that it had
not yet been released, and he knew
that the Ludys’ possession “was
supposed to be a secret”. By 2003,
Larry Ludy had produced hundreds
of vines of ‘Scarlet Royal’ and ‘Autumn
King’. Additionally, Richard
Sandrini, who served as table grape
marketer for Jim and Larry Ludy,
was also informed of the Ludys’
unauthorized possession. After
the critical date, Mr. Sandrini sold
Larry Ludy’s 2004 harvest of ‘Autumn
King’, but to avoid detection
he labeled the grapes as “Thompson
Seedless”.
Appeal ruling
In the U.S., use by a third party
who did not obtain the invention
from the inventor named
in the application or patent is an
invalidating use only if the use was
accessible to the public. An inventor
creates a public use bar when
the inventor shows the invention to,
or allows it to be used by, another
person who is “under no limitation,
restriction, or obligation of confidentiality”
to the inventor.
Therefore, the U.S. appeals court
agreed with the earlier California
court ruling that the Ludys’ use
of the two grape varieties was not
public. The evidence supported that
the majority of the Ludys’ plantings
prior to the patents’ critical date
bore no usable fruit and that they
did not sell any grapes from those
plantings prior to the critical date.
None of the Ludys had disclosed
their possession of the unreleased
varieties to anyone aside from Mr.
Sandrini nor did they provide plant
material to anyone else until after
the critical date. Although the
Ludys’ ‘Scarlet Royal’ and ‘Autumn
King’ vines were not fenced and
were growing next to publicly
accessible roads, none of the vines
were marked or labeled in any way,
making them virtually unidentifiable.
AIA and “public use”
The America Invents Act (AIA)
introduced changes to the U.S. patent
system on September 16, 2011.
Under the AIA, the public use
provisions described above remain
mostly the same with respect to
uses by either the inventor or a third
party. Notable changes under the
AIA include that a prior public use
does not need to be in the U.S. to
qualify as prior art, and that the
one year grace period for public
use is measured from the effective
filing date of the application (i.e.,
from any earlier filed applications).
In considering the present situation,
it seems unlikely that the AIA
would have changed the outcome
of this case regarding “public use”.
The decision in this case emphasizes
the importance for owners of
plant varieties to, prior to filing for
a U.S. plant patent, have signed
agreements with all parties having
access to experimental plant material
to avoid any disclosure which
could result in unauthorized “public
use”. Well-written agreements,
such as confidentiality, material
transfer, experimental testing,
production and commercialization
agreements, are important
in maintaining proper control of
proprietary material. |||
About the author
Both Robert Jondle, Ph.D., and Krista Hill, Ph.D., hail
from Jondle Plant Sciences, Jondle & Associates,
P.C. Krista is a patent agent, while Robert
is a patent attorney.
CIOPORA Chronicle June 2015 | www.FloraCulture.eu 17