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Patentability Search of Plants

15

AUG

2022

A patent search or patentability search is also known as a prior art search or a novelty search. This is a prior art search that helps you determine whether or not the invention you have made is patentable under the Patents Act 1970. There are different types of searches available such as patentability search, invalidity search, infringement search and freedom to operate search. . Each of them performs a very unique and important job in obtaining a patent. Among them, searching for patentability is the most important step in the patent process. It is used to reveal any references that describe the same or similar invention to the invention to be patented. Patent applications are evaluated by the patent office by comparing the claimed invention with the state of the art, if the survey officer finds that similar inventions do not exist and the claimed invention is new and not an obvious combination of things from the state of the prior art, then the patent will be granted otherwise not.

A patent search will help you find out how different your invention is from the prior art that exists, and what all the specific parts are different from before. A patent search may also reveal that the inventor's invention has already been created—even if the invention was never commercially available for purchase. Patentability searches can be conducted during the development phase of an invention, but are generally conducted prior to filing a patent application to verify the feasibility of the invention.

Basically there are 3 types of patents namely Utility patents, Design patents, and Plant patents. Utility and Plant patents are granted for 20 years, whereas Design patents are granted for either 14 or 15 years, depending on when filed.

Plant Patent:

A Plant Patent is an intellectual property right that protects the important or unique characteristics of a new and unique plant from being copied, sold or used by others. A plant must be distinct from other plants, which usually means that it has one or more characteristics that distinguish it from other plants. Characteristics from habit, method and ease of reproduction, color of flowers, stems, leaves, taste, etc. These rights are usually granted to those who invented or discovered a new hybrid plant not previously known to the public. Not every plant is patentable, such as a tuberous plant (potato). Patent rights are granted for the most natural forms of plants. It must be non-obvious to claim patentability.

Plant patents are granted for 20 years without others being able to reproduce, sell or use the plant, allowing the patent holder to reap many profits from their invention. These rights are protected by the Plants Patent Act of 1930 and administered by the US Patent and Trademark Office (USPTO). Protection is limited to the plant in its "ordinary meaning", which includes the following:

* A living plant organism that exhibits a set of characteristics determined by its sole, genetic makeup, or genotype, that can be duplicated by asexual reproduction, but that cannot otherwise be "produced" or "produced."

* Sports, mutants, hybrids and transformed plants are understood; sports or mutants can be spontaneous or induced. Hybrids can be natural, from a planned breeding program or somatic. Although natural plant mutants could occur naturally, they had to be discovered in a cultivated area.

* Algae and macro fungi are considered plants, but bacteria are not.

* Plants in an uncultivated or wild state are not patented.

Need of Plant Patent Search:

A plant patent search allows you to find out if your plant is new or has already been created. It allows you to see what similar plants have been patented. A patent search is very important to save a lot of your precious time, money and effort for an invention that is already invented or already exists for use by the general public or to ensure that no one else has claimed that particular invention. If you don't do this search, you will end up in the trap of infringing someone's patent right.

Benefits of Plants Patent:

1. It gives you the exclusive right to prevent others from making, using, selling or importing your plant without your permission.

2. It gives you protection for a long period of 20 years during which you can earn a lot of profits from your invention.

3. You can also license your patent for others to use, thereby generating additional income.

What makes a Plant Patentable?

The requirements that are necessary to obtain a plant patent are as follows:

1. The inventor who filed the patent application must be the person who discovered the plant.

2. The plant must be found or discovered during the growth process, it should not be produced asexually.

3. The plant claimed in the patent application must be different from known plants, be new and have more than one characteristic, such as a difference in growth conditions, fertility levels or composition.

4. The patented plant should not be obvious to a person of ordinary skill in the art.

5. A plant patent can have two inventors: one who found the plant and one who propagated it asexually. If the invention is a team effort, anyone in the group can be named as a co-inventor.

6. The plant should not have been previously sold before the patent application is filed.

7. The plant should not be available to the public for more than one year before the patent application is filed.

How to do a Plant Patent Search?

* The two main sources for plant patent searches are the USPTO Website and the Google Patent Database. Plant patents always start with the letters “PP” followed by up to 5 numbers. If you know the patent number, you can enter it into the USPTO patent number search or Google's advanced patent search. This method only works if you are looking for a specific patent and you already know the number that will start with "PP" followed by a five digit number (for example PP00786)

* Another method of searching patent photos of plants, which is in the Official Gazette. An official journal is published weekly by the USPTO. Each issue contains patent information and drawings for each patent granted on that date. Many university libraries also maintain photographs of plant patents. These records will contain many items related to how the plant was discovered.

* Many countries provide their patent search database through which you can do further research.

* Another option is to use the services of a Professional Patent Searcher this can be quite expensive but provides more successful results than any other options available.

India’s Position Relating to Plants Patentability:

Section 3 of the Patent Act states what would not be considered an invention within the meaning of the law. Before 2002, section 3(i) of the Act included the process of treating plants to make them free from disease or to increase their economic value. However the amendment in 2002, omitted the word “or plants” from Section 3(i) of the act. Thus, plant processes that increase their economic value were now patentable under the Act. The Patent Act Amendment of 2002 also added Section 3(j) to the Act. This section states that "plants and animals as a whole or any part thereof, excluding micro-organisms, but including seeds, varieties and species and essentially biological processes of production or reproduction of plants and animals"

Hence, prior to 2002, there was a clear position that plants cannot be patented under the Indian act, as section 3(i) would not allow the same. However, the amendment in 2002 has made an established position completely ambiguous, as plants are now omitted from Section 3(i); and whether section 3(j) would include GM seeds is yet to be interpreted.

The Plant Variety Protection and Farmers' Rights Act, 2001 (PPVFRA) is an Act of the Parliament of India which was enacted to ensure the establishment of an effective system of plant variety protection, farmers' and plant breeders' rights and to encourage the development and cultivation of new plant varieties. This act received the assent of the President of India on 30 October 2001. It was enacted to grant intellectual property rights to plant breeders, researchers and farmers who have developed any new or extant plant varieties. Farmers are authorized to keep, use, sow, re-sow, exchange or sell their agricultural produce including seed of a registered variety in a non-branded manner. Farm varieties are eligible for registration and farmers are completely exempted from paying any fees in any proceedings under this Act. The rights granted by this Act are the exclusive right to produce, sell, market, distribute, import and export the variety.

Landmark judgement:

  1. 1. In the case of Monsanto Technology LLC and Ors. Vs. Nuziveedu Seeds Ltd and Ors[1] (2019). , Monsanto licensed its BT (Bacillus thuringiensis) product to various seed companies in India. Monsanto has entered into a licensing agreement for its Nucleic Acid Sequence (NAS) patent containing the Bacillus thuringiensis (Bt) gene, with Nuziveedu Seeds and its subsidiaries for an initial period of 10 years. The company charged a trait value for using the property. Monsanto has been asked by Indian companies to reduce the property fee as various Indian governments adopt new price control policies. Indian companies stopped paying royalties when Monsanto refused to reduce the fee. Monsanto filed for an injunction alleging infringement of the registered patent with respect to the termination of the license agreement. The defendants sought cancellation of the patent under Section 64 of the Indian Patents Act, 1970. They also claimed that their rights were protected by the Plant Variety Protection and Farmers' Rights Act, 2001.

A single-judge ruling by the Delhi High Court said Monsanto had terminated the license and patent protection could not be enforced until the suit was disposed of, and rejected all claims of invalidity and rejection of the patent. Indian companies have been allowed to use the patented technology and during the trial the property value compensation is to be paid by Nuziveedu seeds as stipulated by government policies.

Appeal in Division bench of Delhi High Court considered that the subject matter was not patentable according to section 3(j) of Patent Act, 1970.

SC held that the issues raised are technical in nature and the Division bench's decision based on mere examination of documents without any input from experts and witness was not justified. The Supreme Court stated that the decision given by single judge was satisfactory and held that the company was the rightful patent owner for BT Cotton Seeds in India. Overturning a Delhi High Court division bench judgement which had ruled that items such as seeds, plants and animals could not be patented, the Supreme Court said that the division bench should have confined itself to the question of whether the injunction granted by the single judge was justified or unjustified in the facts and circumstances of the case.

  1. The Supreme Court in the case of Diamond v Chakrabarty (1980)[2] had to consider whether a genetically engineered bacterium, capable of breaking down multiple components of crude oil, was patentable. The patent examiner in that case had rejected the application on two grounds: (i) that micro-organisms are ‘products of nature’ and (ii) that as living things they were not patentable subject matter under the US patent law. The Supreme Court brushed aside these concerns, famously referring that the patent law was to ‘include anything under the sun that is made by man’ as patentable. Accordingly, the Court ruled that the micro-organism qualified as patentable subject matter. However, the Court also noted that the patent claim under consideration ‘was not to a hitherto unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter—a product of human ingenuity’. In other words, some human intervention was required to render a biological innovation as patentable.

Conclusion:

Patenting an original, creative, invention is a complex procedure, wherein the person applying for the patent has to search through all the existing patent in order to distinguish his/ her invention from the existing patent. The similar patent leads to infringement of patent under the applicable laws of the state. In the article, plant patentability is one such example stated, with brief report of the process as well as the provisions are provided for reference. A Patentability search is generally helpful in determining whether a person could obtain a patent on his or her idea. Normally, patents are denied to plants based on objections that new plants resulting from the product of nature are merely fruits of our natural world. The Supreme Court in various landmark judgements on the specific aspects have laid down that such issues are technical in nature and no such decision can be made without any inputs from experts. Any form of human intervention is necessary for any biological innovation to be patented. The Plant patent are granted for 20 years with exclusive right in the hands of the patent holder for use, develop and further licensing the patented plant. Most importantly the person applying for the patent should invest enough time in plant patentability search to prevent any future infringement of patent.

Author: Jatin Chaddha – a student of Vivekananda Institute of Professional Studies, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.


[1] 2019

[2] 447 US 303 (1980)

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