Sunday, June 15

What to do with something new

Patenting a new plant takes patience and perseverance

So there you are, puttering in the garden, when you see something you hadn't noticed before. It might be a splash of flower color completely different from the blossoms around it; or maybe a totally unexpected leaf pattern on a branch of the shrub you've been growing for years. The excitement starts to build. Could it be? Have you come across a brand new plant or a unique hybrid of an old favorite? Visions of overnight fame and fortune grow as you start mulling over names for your fabulous new variety. Next stop, the patent office!

It's a nice scenario. Today we regularly grow any number of remarkable plants that were discovered in just this serendipitous way -- and a whole lot more that were intentionally mutated or bred for some desirable feature. But whatever their origin, these distinctive plants didn't just spring onto the market -- and into the world's gardens -- overnight. Developing a plant and patenting it is an undertaking that involves years and can come undone at any stage of the operation. But if you're convinced you have something worth pursuing, here is the process for protecting your new variety.

Is it unique?
The first step is to determine whether your plant's differences are indeed new and novel. To be classified this way, they have to have a set of genetic characteristics that is distinct from all previous varieties and that can be duplicated by asexual reproduction. These differences can't be the result of environmental conditions or have been otherwise made or manufactured. If your plant meets those criteria, start by writing complete descriptions of the features you feel are different from the existing variety that is most similar to yours. It follows that if it is sufficiently distinct from the one most like it, it will be distinct from all others, too.

Is it uniform and stable?
Next you must show the difference is uniform. If you've got a hosta, for example, that shows a striking golden leaf with blue tips and white margins it has to produce those features consistently all over the plant, not just in an isolated area.

The difference must also be stable. Your hosta can't start reverting to solid green leaves during its growing season or in the seasons to come. Uniformity and stability are determined by asexual reproduction using cuttings, grafts, buds, divisions or layering -- any method that doesn't use seeds or tubers.

Obviously these trials are going to take you some time, so be prepared to invest several years and a lot of effort in taking the copious, thorough notes I'll describe in a moment. And keep your discovery to yourself while you're developing it. The plant can't have been released to public information or sold for more than a year before you make your patent application. If you've released too much information, given public demonstrations, or written articles about your variety, it may disqualify it for a patent.

Into the bureaucracy
Once you've done your homework and have your sky-high stacks of supporting evidence, pictures, growth records and samples, you're ready to move on to the real challenge -- applying for a plant patent.

There are two steps the government recognizes in the development of a new plant: The discovery of the new variety and its reproduction. If you are the one who first saw the new variety and asexually reproduced it, you are considered the sole inventor. But if you found it and had someone else reproduce it and determine that its clones were identical and stable, that person or staff of people would be considered the co-inventor(s).

The notes that you gather during the uniformity/stability asexual reproduction tests have to please a bureaucrat, so stand by! It won't be enough to describe the flowers, leaves, bark or whatever part of the plant that is different. Every part of the plant should be described and recorded in detail for at least one complete growth cycle.

At the very least, include the genus and species, growth habits, characteristics of the different plant structures (bark, foliage, fruit, flowers, etc.) and other characteristics that set it apart, such as resistance to disease, cold, heat, color and fragrance, length of flowering, etc. The amount of detail the patent office requires depends on how close your variety is to other known varieties. It may be so close, in fact, that the differences will be determined to be insignificant and the patent denied.

Jumping through hoops
When you've taken care of everything on your end, you're ready to apply for your patent. This is a very lengthy operation that has to be done in just the right order using just the right forms, words and even punctuation and page layouts! Write to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313. Request forms PTO/SB/19, the Plant Patent Application Transmittal, and PTO/SB/17, the Fee Transmittal.

Then go to the Internet and call up the United States Patent and Trademark Office Website, www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html. This will give you the format for the document you'll prepare giving all the data you've collected on your variety along with drawings, photographs, charts and tables, etc. It's a mind-numbing and emotionally-taxing exercise that may make you throw up your hands and scream "Just take it! Take the plant, I can't go on anymore!" Fear not. There are thousands of patent attorneys and agents circling out there, waiting to take on the paperwork for you. Most reputable patent attorneys charge between $5,000 and $10,000 to draft a patent application, including drawings and filing fees. A patent agent can do the job for you for a bit less, but won't be able to litigate for you if any infringement issues come up.

Self-made or professionally-prepared, the whole package now goes to the patent office for review. They assign a serial number and a filing date, then bean counters go over it line by line to make sure it meets all the formal requirements. Some of the things they look for are a title, or market name you've given the plant. It can't have been used already or be so close to one already in use that it would be confusing. They will also review your botanical descriptions for accuracy and completeness and go over that art information I mentioned earlier. If everything is in order and proves out as you claim, the examiner will declare your variety as "novel and unobvious" and you will be notified to pay an issue fee for your patent.

And that's all there is to it! You now are the proud owner of the exclusive right to grow and sell your variety, or license it to be grown and sold by others, for the next 20 years. So keep an eye out for that odd color or different shape. It may mean you're on the road to developing and patenting your very own new variety of an old garden favorite.

Active in the horticultural industry since 1994, Glen O. Seibert is a former editor for Garden Gate magazine and now works as a writer, landscape designer and self-professed “gardening media mogul.”