Tuesday, 23rd April, 2013
New US plant patent law has changes to novelty requirements
New US plant patent law came into force on 16 March 2013. There are changes to the law on novelty (newness) for eligibility for plant patents.
These changes do not attempt to bring the US law into conformity with the plant variety rights laws in other countries. For New Zealanders wishing to protect a plant variety overseas, the USA remains a country where the possibility of gaining protection must be considered early. Otherwise, the opportunity for gaining protection may be lost.
In the USA, plant patents are used for protection of vegetatively propagated plant varieties (except those propagated from tubers). Varieties propagated using seed or tubers are protected in a scheme more similar to that for plant variety rights in New Zealand and plant breeders' rights in Australia.
Under the old plant patent law, novelty was destroyed by use, sale or first offer for sale in the USA more than 12 months before the US filing date. Novelty was also destroyed by the combination of publication and availability to the public in any country, more than 12 months before the US filing date. Sale and use outside the US is usually accompanied by publication - for example, publication of a brochure or of a plant variety rights (PVR) application. In many situations this means that sale and use outside the US triggered the need to file the US application within 1 year, where for other countries there was no need to file for four or six years.
The new plant patent law is different but the effect is mostly similar. Publication anywhere (combined with availability of the variety to the public) destroys novelty if more than 12 months before the relevant filing date. This time the relevant date is the effective filing date. This date can be the US filing date as before, but it can also be the date a prior foreign PVR application (such as a New Zealand PVR application) was filed. To make the foreign filing date "effective", priority must be formally claimed. If relying on such foreign priority, we recommend supplying more than the minimum information with the PVR application to ensure that the priority is recognised.
Public use or public sales of the variety anywhere in the world are now novelty- destroying (even without publication) if more than 1 year before the effective filing date. There is uncertainty about sales and offers that are not public. There is also a new category of novelty destroying activity - making the variety "otherwise available to the public" more than 12 months before the effective filing date.
Effect of change
The end result for breeders in New Zealand is that the decision on whether to file in the US for plant patents is still required early. An offer for sale, sale or public use of the variety anywhere may trigger a one year deadline for filing.
We continue to recommend that breeders consider whether a US plant patent filing is required at the time of filing of the initial PVR application (including in New Zealand) or when commercialisation or disclosure anywhere is imminent.
The new law may allow some delay of filing in the USA where a PVR application has been filed elsewhere. However, some acts outside the USA are more likely to be seen as novelty-destroying than under the old law. These are sales and offers for sale outside the USA without publication, and making the variety "otherwise available to the public" without publication.
The new law is considerably more complex than described above. Complexities arise when someone else independently breeds the same variety. Fortunately most plant patent applicants do not have to consider that possibility, where first to file still does not necessarily win.