Can a plant be protected under both plant patent and utility patent provisions?
Yes, a plant can be protected under both plant patent (35 U.S.C. 161) and utility patent (35 U.S.C. 101) provisions. The MPEP cites the Supreme Court case J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., which held that:
“patentable subject matter under 35 U.S.C. 101 includes newly developed plants, even though plant protection is also available under the Plant Patent Act (35 U.S.C. 161 – 164) and the Plant Variety Protection Act (7 U.S.C. 2321 et. seq.).”
The MPEP further clarifies:
- An application filed under 35 U.S.C. 101 may claim the same asexually reproduced plant that is claimed under 35 U.S.C. 161.
- The 35 U.S.C. 101 application may also claim plant materials and processes involving plant materials.
- A terminal disclaimer may be used to overcome an obviousness-type double patenting rejection when claims to the same plant appear in both types of applications.
This dual protection allows inventors to secure broader rights and potentially longer terms of protection for their plant inventions.
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