2012 CIOPORA Chronicle

course of action remains for plant
breeders/inventors operating
outside the U.S. to seek PBR within
one year of commercialization in a
country abroad, and to thereafter
seek U.S. plant patent protection
within one year of the filing of such
PBR application.
Priority claim
It will be important at the time of
submission of the U.S. plant patent
application to indicate a priority
claim for the earlier PBR application
under 35 U.S.C. §119(f).
This claim is further perfected
by the timely submission to U.S.
authorities of a certified copy of
the earlier PBR application. Such
certified copy is prepared by the
governmental authority where the
PBR application was initially filed.
Under such circumstance, the effective
filing date of the U.S. plant
patent application will be considered
to be that of the earlier PBR
application. Any potential bar to
patentability created by the conduct
of the breeder/inventor within one
year of the initial PBR application
should be obviated in view of the
sufficiently early effective filing date
that is accorded the U.S. plant patent
application.
Appropriate procedure
So long as the PBR application
was filed within one year of commercialization
abroad, it should be
possible to submit a plant patent
application in the U.S. more than
one year after the commercialization
date so long as the application
is filed in the U.S. within one year
of the initial PBR application. For
example, the following is believed
to be an appropriate procedure to
follow to obtain U.S. plant patent
protection:
• Commercialize in France on April
1, 2013 (with or without a printed
publication);
• File a PBR application in France
on March 1, 2014;
• File a U.S. plant patent application
on February 1, 2015, while
claiming priority to the PBR
fi l i ng.
Accordingly, even with the substantial
changes in the AIA, foreign
plant breeders/inventors continue to
be provided some additional time
to submit a U.S. plant patent application
provided a claim is timely
perfected for taking advantage of
an earlier PBR filing date.
We are reminded that standard
UPOV novelty provisions have
never been a part of the U.S. Plant
Patent Law (35 U.S.C. §161 to
164). The AIA does not change
this. Such typical UPOV provisions
provide that a plant (a) must
not have been offered for sale or
marketed with the agreement of the
breeder longer than one (1) year in
the country where rights are being
sought, or (b) in any other country
longer than six (6) years for a tree or
vine, or longer than four (4) years
for any other plant.
New and revised
procedures
Outside of the grace period context,
the AIA does present some
new and revised procedures that a
plant patent applicant may find of
interest.
For instance, the AIA has revised
the Pre-Issuance Submission
procedures , such that a third party
has a greater opportunity to submit
certain information relevant to
patentability in a competitor's plant
patent application. The USPTO
will then consider the information
during examination of the
application.
Also, the AIA has further revised
the procedures that a third party
can use to challenge a plant patent
after the grant of rights. For
example, there will now be the
possibility for a post-grant review
and an expanded inter-partes reexamination
. These are anticipated
to require high government fees to
initiate, and a significant investment
of attorney time. Comments
and inquiries are welcome. |||
CIOPORA Chronicle April 2012 | www.CIOPORA.org 13