Plant Variety Protection Act (PVPA) Attorney


There are two intellectual property tools for protecting novel plant varieties in the US, a plant patent issued by the U.S. Patent and Trademark Office (USPTO) and a certificate under the Plant Variety Protection Act (PVPA) by the US Department of Agriculture. For a discussion of plant patents, please see our article posted here. Utility patents are also available for different aspects of plants such as plant cells, plant tissue cultures, plant parts, herbal medicines and supplements, chemicals made by plants, and novel plant varieties that result from human manipulation of the plant through, e.g., genetic mutations or other interventions that alter the growth, yield, color, or other characteristics of a plant variety.

Formerly, plant patents were the exclusive means to protect asexually reproduced, novel plant varieties, and the PVPA allowed for registration of novel sexually reproducing plant varieties (i.e., plants produced from seeds). However, the 2018 Farm Bill amended the PVPA, and now PVPA certificates are available for both asexually and sexually reproduced plant varieties. A PVPA certificate provides protections to the owner that are similar to a patent. The term of a US plant patent is 20 years from the filing date of the application for the patent. Thus, if it takes two years to obtain the patent, the enforceable term would be the remaining 18 years. However, the 20-year term of a PVPA certificate runs from the date the certificate is granted, and the term is longer (25 years) for a tree or a vine. Thus, a grower may be able to obtain a longer term of protection for asexually reproduced varieties under the PVPA than with a plant patent.

The scope of protection for an asexually reproduced variety under the PVPA may also be broader. A US plant patent prevents asexual reproduction of the particular variety identified in the patent (i.e., cloning). However a PVPA certificate protects not only the particular variety that is the subject of the application, but also certain varieties derived from the protected variety if they meet certain requirements. The complete list of infringing acts under Section 2541(a) of Title 7 of the United States Code is as follows:

(1) sell or market the protected variety, or offer it or expose it for sale, deliver it, ship it, consign it, exchange it, or solicit an offer to buy it, or any other transfer of title or possession of it;

(2) import the variety into, or export it from, the United States;

(3) sexually or asexually multiply, or propagate by a tuber or a part of a tuber, the variety as a step in marketing (for growing purposes) the variety;

(4) use the variety in producing (as distinguished from developing) a hybrid or different variety therefrom;

(5) use seed which had been marked "Unauthorized Propagation Prohibited" or "Unauthorized Seed Multiplication Prohibited" or progeny thereof to propagate the variety;

(6) dispense the variety to another, in a form which can be propagated, without notice as to being a protected variety under which it was received;

(7) condition the variety for the purpose of propagation, except to the extent that the conditioning is related to the activities permitted under
section 2543 of this title;

(8) stock the variety for any of the purposes referred to in paragraphs (1) through (7);

(9) perform any of the foregoing acts even in instances in which the variety is multiplied other than sexually, except in pursuance of a valid United States plant patent; or

(10) instigate or actively induce performance of any of the foregoing acts.

The statute provides protection against a broad spectrum of unauthorized uses of a protect variety, and thus robust protection against those seeking to take unjustified advantage of the protected plant variety. Under Section 2541(c), the infringing activities listed above also apply to (1) any variety that is essentially derived from a protected variety, unless the protected variety is an essentially derived variety; (2) any variety that is not clearly distinguishable from a protected variety; (3) any variety whose production requires the repeated use of a protected variety; and (4) harvested material (including entire plants and parts of plants) obtained through the unauthorized use of propagating material of a protected variety, unless the owner of the variety has had a reasonable opportunity to exercise the rights provided under this chapter with respect to the propagating material. A grower should therefore strongly consider filing both a US plant patent application and a PVPA application for new asexually reproduced plants.

While there are many similarities, there are also some significant differences between the requirements for filing a plant patent versus an application for a PVPA certificate. Both systems require the application to be filed within one (1) year of any sale or disposition of the variety in the United States. A sale or disposition of the variety outside of the US more than one year prior to filing will also bar a US plant patent application. However, under the PVPA, this period is extended to four years (for a tuber propagated plant), and six years (for a tree or vine) that is sold or disposed of outside of the US.

One relative disadvantage of the PVPA filing is that it is more expensive than a plant patent. The filing fees for a PVPA certificate are significantly higher than for a plant patent application. Currently, the PVPA filing fee is $5,150, while the current filing fees for a US plant patent total $770 (the patent filing fees can be reduced for small businesses and individuals). In addition, a PVPA application requires the applicant to make a deposit of plant material, which is not required by the USPTO. Presently, the deposit requirement for asexually reproduced plants has been waived until January 6, 2023, but the applicant must submit a declaration that the propagating material will be maintained at a specific physical location subject to inspection if requested, and that the propagating material will be provided to the Plant Variety Protection Office within 3 months of a request.

The attorneys at Sierra IP Law have the experience and expertise needed to help their clients obtain US plant patents and PVPA certificates for their clients. The attorneys at Sierra IP Law work with Dr. Katherine Waselkov and other botany professionals to observe and record the necessary botanical details of the new plant varieties on behalf of clients pursuing patent and PVPA protection.

Additional information may be obtained from the United States Department of Agriculture web site - PVPA.

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