Q: What is the significance of the In re Elsner case for plant patents?

The In re Elsner case, as discussed in MPEP 2121.03 , is significant for plant patents as it establishes criteria for when a combination of facts and events can constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). The MPEP states: "The court held that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, and (iii) such possession permits asexual reproduction of the plant without undue experimentation to one of ordinary skill in the art, then that combination of facts and events directly conveys the essential knowledge of the invention and constitutes a pre-AIA 35 U.S.C. 102(b) statutory bar." This case highlights the importance of considering foreign sales and publications in determining prior art for plant patents, especially when they enable asexual reproduction of the plant. To learn more: In re Elsner plant patents statutory bar foreign sales patent law

Question 1

What is the role of the Office of Patent Application Processing (OPAP) in handling new design and plant patent applications?

Accepted Answer

The Office of Patent Application Processing (OPAP) plays a crucial initial role in handling new design and plant patent applications at the USPTO. As detailed in MPEP 909.02(a):

"New nonprovisional design and plant applications are assigned to Technology Centers (TCs) 2900 and 1600, respectively, in the first instance by the Office of Patent Application Processing (OPAP)."

OPAP is responsible for the initial processing of these applications, which includes reviewing them for completeness, assigning application numbers, and directing them to the appropriate Technology Centers for examination. This ensures that applications are routed efficiently to the correct specialized examiners.

To learn more:

Question 2

Do plant patent applications require an abstract?

Accepted Answer

Yes, plant patent applications require an abstract when they are allowed. The MPEP 1611 clearly states: "All plant patent applications should contain an abstract when allowed."

An abstract is a brief summary of the invention that helps readers quickly understand the nature and essence of the plant patent. This requirement aligns plant patent applications with other types of patent applications, which also typically require abstracts.

To learn more:

Question 3

How does the written description requirement differ for plant patents compared to utility patents?

Accepted Answer

The written description requirement for plant patents is less stringent than for utility patents. This difference is rooted in the unique nature of plants and the historical challenges of describing them in patent applications. The MPEP cites the Supreme Court's explanation in Diamond v. Chakrabarty:

"In enacting the Plant Patent Act, Congress addressed both of these concerns. It explained at length its belief that the work of the plant breeder 'in aid of nature' was patentable invention. S. Rep. No. 315, 71st Cong., 2d Sess., 6-8 (1930); H.R. Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930). And it relaxed the written description requirement in favor of 'a description … as complete as is reasonably possible.' 35 U.S.C. § 162."

Key points about the written description for plant patents:

It is relaxed compared to utility patents, requiring a description "as complete as is reasonably possible."
This accommodation recognizes the difficulty in providing a precise written description of a plant's unique characteristics.
The description should still be sufficient to distinguish the new variety from other known plants.
Often, the description is supplemented with visual aids like photographs or drawings.

This relaxed standard helps balance the need for clear patent disclosure with the practical challenges of describing living organisms.

To learn more:

Question 4

What is the significance of the In re Elsner case for plant patents?

Accepted Answer

The In re Elsner case, as discussed in MPEP 2121.03, is significant for plant patents as it establishes criteria for when a combination of facts and events can constitute a statutory bar under pre-AIA 35 U.S.C. 102(b). The MPEP states:

"The court held that when (i) a publication identifies claimed the plant, (ii) a foreign sale occurs that puts one of ordinary skill in the art in possession of the plant itself, and (iii) such possession permits asexual reproduction of the plant without undue experimentation to one of ordinary skill in the art, then that combination of facts and events directly conveys the essential knowledge of the invention and constitutes a pre-AIA 35 U.S.C. 102(b) statutory bar."

This case highlights the importance of considering foreign sales and publications in determining prior art for plant patents, especially when they enable asexual reproduction of the plant.

To learn more:

Question 5

Are maintenance fees required for all types of patents?

Accepted Answer

Are maintenance fees required for all types of patents?

No, maintenance fees are not required for all types of patents. The MPEP 2504 provides clear guidance on which patents are subject to maintenance fees:

"Maintenance fees are required to be paid on all patents based on applications filed on or after December 12, 1980, except for plant patents based on applications filed before June 8, 1995. This includes reissue patents as well as original patents."

Here's a breakdown of maintenance fee requirements by patent type:

Utility patents: Subject to maintenance fees
Design patents: Not subject to maintenance fees
Plant patents (filed before June 8, 1995): Not subject to maintenance fees
Plant patents (filed on or after June 8, 1995): Subject to maintenance fees
Reissue patents: Subject to maintenance fees if the original patent was subject to them

It's crucial for patent holders to understand these distinctions to properly maintain their patent rights and avoid unintentional expiration due to non-payment of required fees.

To learn more:

Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 2100 – Patentability (1)

What is the significance of the In re Elsner case for plant patents?

MPEP 2121.03 – Plant Genetics — What Constitutes Enabling Prior Art (1)

What is the significance of the In re Elsner case for plant patents?

MPEP 2500 – Maintenance Fees (1)

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?

MPEP 2504 – Patents Subject To Maintenance Fees (1)

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?

Patent Law (2)

What is the significance of the In re Elsner case for plant patents?

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?

Patent Procedure (2)

What is the significance of the In re Elsner case for plant patents?

Are maintenance fees required for all types of patents?

Are maintenance fees required for all types of patents?