MPEP § 1605 — Specification and Claim (Annotated Rules)
§1605 Specification and Claim
This page consolidates and annotates all enforceable requirements under MPEP § 1605, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Specification and Claim
This section addresses Specification and Claim. Primary authority: 35 U.S.C. 162, 37 CFR 1.163, and 37 CFR 1.164. Contains: 4 requirements and 5 guidance statements.
Key Rules
Plant Application Content
(a) The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
(a) The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical textbooks or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad nonbotanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage and the genus and species designation of the plant variety sought to be patented. The Latin name of the genus and species of the plant claimed should be stated and preceded by the heading set forth in 37 CFR 1.163(c)(4). The specification must particularly point out where, e.g., location or place of business, and in what manner the variety of plant has been asexually reproduced.
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical textbooks or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad nonbotanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage and the genus and species designation of the plant variety sought to be patented. The Latin name of the genus and species of the plant claimed should be stated and preceded by the heading set forth in 37 CFR 1.163(c)(4). The specification must particularly point out where, e.g., location or place of business, and in what manner the variety of plant has been asexually reproduced.
Patent Application Content
(c) The specification should include the following sections in order:
- (1) Title of the invention, which may include an introductory portion stating the name, citizenship, and residence of the applicant.
- (2) Cross-reference to related applications (unless included in the application data sheet).
- (3) Statement regarding federally sponsored research or development.
- (4) Latin name of the genus and species of the plant claimed.
- (5) Variety denomination.
- (6) Background of the invention.
- (7) Brief summary of the invention.
- (8) Brief description of the drawing.
- (9) Detailed botanical description.
- (10) A single claim.
- (11) Abstract of the disclosure.
(d) The text of the specification or sections defined in paragraph (c) of this section, if applicable, should be preceded by a section heading in upper case, without underlining or bold type.
Genus and Species Claims
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical textbooks or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad nonbotanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage and the genus and species designation of the plant variety sought to be patented. The Latin name of the genus and species of the plant claimed should be stated and preceded by the heading set forth in 37 CFR 1.163(c)(4). The specification must particularly point out where, e.g., location or place of business, and in what manner the variety of plant has been asexually reproduced.
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical textbooks or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad nonbotanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage and the genus and species designation of the plant variety sought to be patented. The Latin name of the genus and species of the plant claimed should be stated and preceded by the heading set forth in 37 CFR 1.163(c)(4). The specification must particularly point out where, e.g., location or place of business, and in what manner the variety of plant has been asexually reproduced.
35 U.S.C. 112 Standard for Plants
No plant patent shall be declared invalid for noncompliance with section 112 if the description is as complete as is reasonably possible.
Claims
The claim in the specification shall be in formal terms to the plant shown and described.
Fee Transmittal
(b) The elements of the plant application, if applicable, should appear in the following order:
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
The application is objected to under 37 CFR 1.163(a) because the specification does not “particularly point out where and in what manner the variety of plant has been asexually reproduced.” Correction is required.
- Specification Must Fully Describe Plant and Asexual Reproduction
- Location and Character of Plant Discovery Must Be Specified
- Specification Must Describe Plant Characteristics Botanically
- Genus and Species Designation Required for Patent
- Genus and Species Must Be Stated
- Specification Must Detail Asexual Reproduction Method
- Order of Plant Application Elements Required
- Order of Specification Sections Required
The disclosure is objected to under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical description and the characteristics which distinguish over related known varieties. More specifically: [1] .
- Specification Must Describe Plant Characteristics Botanically
- Genus and Species Designation Required for Patent
- Genus and Species Must Be Stated
- Specification Must Detail Asexual Reproduction Method
- Specification Must Fully Describe Plant and Asexual Reproduction
- Location and Character of Plant Discovery Must Be Specified
- Order of Specification Sections Required
- Section Heading for Specification Required
The disclosure is objected to under 37 CFR 1.163(a) because the specification does not particularly point out the location and character of the area where the plant was discovered.
- Specification Must Fully Describe Plant and Asexual Reproduction
- Location and Character of Plant Discovery Must Be Specified
- Specification Must Describe Plant Characteristics Botanically
- Genus and Species Designation Required for Patent
- Genus and Species Must Be Stated
- Specification Must Detail Asexual Reproduction Method
- Order of Plant Application Elements Required
- Order of Specification Sections Required
The disclosure is objected to under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, because the [1] colors specified fail to correspond with those shown.
The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, as being unsupported by a clear and complete disclosure with regard to [1] colors, for the following reasons: [2] .
Citations
| Primary topic | Citation |
|---|---|
| Fee Transmittal | 37 CFR § 1.162 |
| – | 37 CFR § 1.163(a) |
| Genus and Species Claims Plant Application Content | 37 CFR § 1.163(c)(4) |
| Fee Transmittal | 37 CFR § 1.76 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1605 — Specification and Claim
Source: USPTO1605 Specification and Claim [R-11.2013]
35 U.S.C. 162 Description, claim.
No plant patent shall be declared invalid for noncompliance with section 112 if the description is as complete as is reasonably possible.
The claim in the specification shall be in formal terms to the plant shown and described.
37 CFR 1.163 Specification and arrangement of application elements in a plant application.
- (a) The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
- (b) The elements of the plant application, if applicable, should appear in the following order:
- (c) The specification should include the following sections in
order:
- (1) Title of the invention, which may include an introductory portion stating the name, citizenship, and residence of the applicant.
- (2) Cross-reference to related applications (unless included in the application data sheet).
- (3) Statement regarding federally sponsored research or development.
- (4) Latin name of the genus and species of the plant claimed.
- (5) Variety denomination.
- (6) Background of the invention.
- (7) Brief summary of the invention.
- (8) Brief description of the drawing.
- (9) Detailed botanical description.
- (10) A single claim.
- (11) Abstract of the disclosure.
- (d) The text of the specification or sections defined in paragraph (c) of this section, if applicable, should be preceded by a section heading in upper case, without underlining or bold type.
37 CFR 1.164 Claim.
The claim shall be in formal terms to the new and distinct variety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics. More than one claim is not permitted.
The specification should include a complete detailed description of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, expressed in botanical terms in the general form followed in standard botanical textbooks or publications dealing with the varieties of the kind of plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a mere broad nonbotanical characterization such as commonly found in nursery or seed catalogs. The specification should also include the origin or parentage and the genus and species designation of the plant variety sought to be patented. The Latin name of the genus and species of the plant claimed should be stated and preceded by the heading set forth in 37 CFR 1.163(c)(4). The specification must particularly point out where, e.g., location or place of business, and in what manner the variety of plant has been asexually reproduced.
Form Paragraphs 16.01, 16.09, and 16.10 may be used to object to the disclosure under 37 CFR 1.163(a).
¶ 16.01 Specification, Manner of Asexually Reproducing
The application is objected to under 37 CFR 1.163(a) because the specification does not “particularly point out where and in what manner the variety of plant has been asexually reproduced.” Correction is required.
¶ 16.09 Specification, Less Than Complete Description
The disclosure is objected to under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical description and the characteristics which distinguish over related known varieties. More specifically: [1].
¶ 16.10 Specification, Location of Plant Not Disclosed
The disclosure is objected to under 37 CFR 1.163(a) because the specification does not particularly point out the location and character of the area where the plant was discovered.
Where color is a distinctive feature of the plant, the color should be positively identified in the specification by reference to a designated color as given by a recognized color dictionary or color chart.
Form Paragraphs 16.02 and 16.03 may be used to object to the disclosure or reject the claim, respectively, because of a lack of a clear and complete disclosure with regard to colors.
¶ 16.02 Colors Specified Do Not Correspond With Those Shown
The disclosure is objected to under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the [1] colors specified fail to correspond with those shown.
¶ 16.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Non-Support for Colors
The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as being unsupported by a clear and complete disclosure with regard to [1] colors, for the following reasons: [2].
If the written description of a plant is deficient in certain respects (see, e.g., In re Greer, 484 F.2d 488, 179 USPQ 301 (CCPA 1973)), a clarification or additional description of the plant, or even a wholesale substitution of the original description so long as not totally inconsistent and unrelated to the original description and photograph of the plant may be submitted in reply to an Office action. Such submission will not constitute new matter under 35 U.S.C. 132. Jessel v. Newland, 195 USPQ 678, 684 (Dep. Comm’r Pat. 1977).
The rules on Deposit of Biological Materials, 37 CFR 1.801–1.809, do not apply to plant patent applications in view of the reduced disclosure requirements of 35 U.S.C. 162, even where a deposit of a plant has been made in conjunction with a utility application (35 U.S.C. 101).
A plant patent is granted only on the entire plant. Only one claim is necessary and only one is permitted. A method claim in a plant patent application is improper. An example of a proper claim would be “A new and distinct variety of hybrid tea rose plant, substantially as illustrated and described herein.”