how to read patents

8/8/2019 How to Read Patents

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Patent Knowledge QuizThe following 20 questions are designed to demonstrate key points about patents (seeTop 10things to know about patents) in a contextual framework. It is by way of encounters with real-lifesituations that the facts and theory of patent law and procedures are learned.

These particular questions focus mainly on patent standards and minimum requirements as setout in the Trade Related Intellectual Property Aspects Agreement, better known asTRIPs, aninternational treaty acceded to by over 140 countries. Implementation of the standards andrequirements occur by legislation in member countries, and as such, patent law varies somewhatamong the members. Historically, the patent law system of the United States exhibits somesubstantial differences to the system of Europe and many other countries. Because the UnitedStates has one of the largest and most established patent systems, some of the questions aredesigned to illustrate these differences.

The original recipients of this quiz were enthusiastic about it as a learning tool. We hope youenjoy it, learn from it, and improve your own skills.

Question A:A patent gives the owner the right to:

1. make her invention

2. commercialize her invention

3. publish the results of tests using the invention

4. keep others from making her invention

5. collect a monetary award from the government

6. 1 and 2

7. all of the above

Answer

Question B:

A policy (or policies) behind the patent system is:

1. to encourage an inventor to disclose an invention by granting exclusive rights over theinvention to the inventor.

2. to benefit the public by limiting the scope and term of the exclusive rights granted to aninventor.

3. to benefit the public through encouraging innovation by publishing a full disclosure ofthe technical details of the invention.

4. to benefit the public through guaranteeing that the inventor can commercialize his/herinvention

5. 1 and 2

6. 1, 2 and 3

7. 2, 3 and 4

Answer
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Question C:

The minimum requirements for obtaining a patent are that the invention must be:

1. novel

2. non-obvious or include an inventive step

3. useful or capable of industrial application4. 1 and 2

5. 1 and 2 and 3

Answer

Question D:

An inventor was awarded a patent in the U.K. on a method for selecting transformed plants andhas practiced the mentioned method only in the U.K. Six months later, another person whoindependently invented the same method in Australia wants to obtain a patent in Australia. She:

1. could do it without major problems

2. would not be able to do it because the granted patent was published in the U.K.

3. would not be able to do it because the method is used in the U.K.

4. 2 and 3

5. none of the above

Answer

Question E:

The method mentioned above was not patented or published anywhere but has been used in theU.K. and only in the U.K. since 1997. Another person who independently invented the samemethod in Australia in 2001 wants to obtain a patent in Australia. She:

1. could do it without major problems

2. would not be able to do it because the invented method has been used in the U.K.

3. could do it only if the method has not been described in a written publication anywhere inthe world

4. 1 and 3


Answer

Question F:

A patent application is filed on 1 January 1999. The application is published 18 months later on 1July 2000 and granted on 30 May 2001. The patent is valid until:

1. 30 May 2021; 20 years from the grant date of the patent

2. 1 July 2020; 20 years from the publication date of the application

3. 1 January 2019; 20 years from the filing date of the application

4. some other date

Answer
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Question G:

A patent awarded by the patent office in Japan is valid in:

1. Indonesia and its territories

2. Japan and its territories

3. All ASEAN countries4. All countries that adhere to TRIPS

Answer

Question H:

Assuming an applicant has indicated a desire to have a patent valid in all European countries andelects to have the application examined by the European Patent Office, a regional patent office,the patent that is ultimately granted is valid:

1. automatically in all countries that are members of the European Patent Office

2. automatically in all European countries, regardless of whether they are member

3. upon registration in each country that supports the European Patent Office

Answer

Question I:

An international patent:

1. is the result of an international application filed under the international PatentCooperation Treaty (PCT)

2. is valid in all member countries of the PCT

3. is valid only in the PCT countries designated by the applicant upon filing the application

4. 1 and 2

5. 1 and 3

6. there is no such thing as an international patent

Answer

Question J:

You have a granted patent in the United States and in Australia on using GUSPlus, a verysensitive detection system for identifying transformed plants. A couple of colleagues of yoursare working at an Australian non-profit research institute and another is working at CornellUniversity in the United States, and they want to use the GUSPlus system for research purposesto identify transgenic plants. They can:

1. use it freely without the need to tell you2. use it, but they should tell you first

3. use it only if they get a license or some other form of permission from you

4. cannot use it at all

Answer

Question K:


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You are a farmer growing Bt-transgenic soybeans in Argentina and Humongous Company, avery large multi-national agricultural company, has a valid patent in the United States, but not inArgentina, that claims Bt-transgenic soybeans. You will be:

1. infringing Humongous' patent rights by growing Bt-transgenic soybeans in Argentina

2. infringing Humongous' patent rights by growing Bt-transgenic soybeans and saving seeds

for next sowing season in Argentina

3. infringing Humongous' patent rights by exporting Bt-transgenic soybeans to the U.S.


Answer

Question L:

A published patent specification:

1. is always a granted patent and is enforceable

2. is always an application for a patent and is not enforceable

3. is always an application for a patent and is enforceable4. could be either a granted patent or a patent application

Answer

Question M:

A PCT publication is:

1. always a granted patent

2. sometimes a granted patent

3. always a patent application

Answer

Question N:

If you want to know what is actually covered by a granted patent, you will look at:

1. the title

2. the title and the abstract

3. the abstract

4. the detailed description of the invention and the drawings

5. the detailed description of the invention and the claims

6. the claims

Answer

Question O:

A published application in Brazil describes the cloning of glycosyltransferases, enzymes thattransfer sugar moieties, from five different bacteria including Staphylococcus,Pneumococcus,Arthrobacter, Clavibacter, and Thermobacter, and teaches how to obtain genes encoding thesame enzymes from other bacterial genera. The only claim recites:"An isolated DNA sequence encoding a glycosyltransferase isolated from Staphylococcus".


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You need a license before you can use DNA encoding the following in Brazil:

1. a glycosyltransferase from Staphylococcus

2. a glycosyltransferase fromHaemophilus

3. a glycosyltransferase fromPneumococcus

4. 1 and 35. none of the above

Answer

Question P:

The publication mentioned above is a Brazilian granted patent. You need a license before youcan use DNA encoding the following in Brazil:

1. a glycosyltransferase from Staphylococcus

2. a glycosyltransferase fromHaemophilus

3. a glycosyltransferase fromPneumococcus

4. 1 and 3


Answer

Question Q:

Two independent inventors come up with the same patentable invention and each of themdecides to file a patent application in Canada, Germany and the United States. Who would getthe patents?

1. in each country, the first one to file the patent application

2. in Canada, the first to file the patent application, and in Germany and the United States,

the first to invent the invention

3. in Germany, the first to file the patent application, and in Canada and the United States,the first to invent the invention

4. in Canada and Germany, the first to file the patent application, and in the United States,the first to invent the invention

5. in each country, the first to invent

Answer

Question R:

If you infringe a patent:

1. you go to jail if caught

2. you pay a large fine to the government

3. the owner of the patent will sue you in a court

4. nothing may happen

5. 2 and 3 are both possible

6. 3 and 4 are both possible
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Answer

Question S:

You and a couple of colleagues are the inventors of a new drug that successfully tackles stomachcancer and has few unwanted side effects. Your colleagues decide to publish the methodologyused to develop the drug in a prestigious scientific journal. The article is published in January

2001 and the research results are presented in two international conferences in March 2001 withgreat success. In the meantime, your team realizes that it would be worthwhile obtaining a patentfor the new drug. A patent specification is diligently prepared and filed in the United States andwith the European Patent Office in April 2001. Which of the following scenarios is the mostlikely:

1. because the invented drug fulfills the criteria for patentability, your team is awarded thepatent in both jurisdictions.

2. because the invention was published before the filing of the patent application, your teamis denied a patent in both jurisdictions.

3. because the invention was published within one yearof the filing of the patent

application, your team is allowed a patent in both jurisdictions.4. because the invention was published within one yearof the filing of the patent

application, your team is denied a patent in Europe, but granted in the United States

Answer

Question T:

A patent on a method to heal wounds using turmeric has been granted in both Europe and in theU.S. in January 2001. You, as a person not involved at all in the alleged invention, have writtenevidence proving that the method was well-known not only in the mentioned places, but also inother parts of the world. You find out about the patent in August 2001. In the presentcircumstances you could:

1. file an opposition against the granted patent before the patent offices in both the UnitedStates and in Europe alleging lack of novelty

2. file an opposition against the granted patent before the United States patent officealleging lack of novelty

3. file an opposition against the granted patent before the European patent office alleginglack of novelty

Answer

Question U:

The following is a good reason to search for patents and patent applications with the CAMBIA

Patent Lens search:1. for scientific information

2. for information on freedom to operate

3. to see if your idea is patentable (novel and non-obvious)

4. to see what your competitor is up to

5. 2, 3, and 4
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6. all of the above

Answer

Back to Patent Tutorials

Patent Top Ten1. There is NO such thing as an international patent.

There are "international applications" called PCT applications that need to be converted intonational applications within a period of maximum 30 months in order to obtain a patent. Eachcountry in which a national application is lodged has its own process and criteria forpatentability.

More information

2. Patent applications are NOT the same as granted patents.

A patent application undergoes an examination process to see if it meets the patentabilityrequirements of the country it is lodged in. During this process, the claims are often amended.Thus, a patent application contains claims reciting what an applicant hopes to get patentprotection for, but the claims in the granted patent may be different, and only an issued patentcontains claims that have legal protection.

More information

3. Patents are examined, they are NOT peer-reviewed.

Patent examiners assess an invention against the relevant prior art publicly available in thefield of the invention to determine whether it fulfills the patentability criteria. Therequirements for patentability are not the same as the criteria used for publishing researchresults in a scientific journal. They may appear to be more lenient, or much stricter. The mostimportant criteria for patenting generally are whether the invention is enabled by thedescription submitted, and whether it appears to have been described or obvious from whatwas already in the public domain before filing (the subject for a publication may be quite
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impactful without fulfilling the patentability criteria).

More information

4.The applicant or assignee of a patent may not be the actual holder of

the patent rights.

Patents are commercially tradeable assets, and the patent rights can be assigned or licensed tothird parties, acquired in mergers etc. The holders of licenses or assignments, i.e. the actualrights to use the patents, are typically not listed in the national patent databases. In addition,the patent owner may have changed since the patent published, although because ownership(assignment) is typically recorded at patent offices the current owner can be determined. Ifyou want to use a patented technology, it is a good idea to look in the patent office on-line

records to establish the name of actual rights-holder.

More information

5. Patents have a limited lifetime.

In most countries now, a patent lasts for 20 years from the date of filing, provided requiredmaintenance fees are paid. This period is the monopoly period granted to the owner of the

patent.

More information

6. Patents are rights with geographic boundaries.

Patents are granted by the government of a country or jurisdiction and the rights are validonly within its territorial boundaries.

More information

7. Infringement of a patent is generally a legal matter between parties.


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In most countries, infringement is a civil wrong, where a person's rights are violated and is upto the offended party to sue for damages or seek other legal remedies. In some countries,however, infringement of a patent is an act committed against the state and may bepunishable by fines and imprisonment.

More information

8.Claims define the limits of a patented invention and the boundaries of

the patent rights....

These rights and limits are not defined by the titles, not the abstract, not the detaileddescription of the invention, not the examples and figures.

More information

9. A patent does not guarantee income to the owner.

As is the case for any tradeable asset, a patent can be promoted, offered in the market andcommercialized actively in order to generate income for its owners. Many patents do notgenerate any income, and if this is the case, sometimes owners choose to allow them to lapseearly. If you are interested in using the technology described in a patent, it is a good idea to

check whether the patent is still in force before contacting the owner for a license.

More information

10. Patent rights are exclusionary rights.

Patent rights can be used to stop other parties from using, making, selling, offering to sell,and importing the protected invention if the other parties do not have authorization from the

holder of the patent rights. They don't necessarily give a right to use the technology if otherpatents or laws prevent it.

More information

Back to Patent Tutorials
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United States

(published on or after 2 Jan 2001)

Exemplary publ. Code meaning
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no.

US2003/0157684A1

first publication of application

US2004/0038291A2

second or subsequent publication of application,requested by applicant

US2004/0185440A9

correction of error(s) in previous publication (eitherA1 or A2); error(s) made by USPTO

US 6,207,883 B1patent which was not published as a patentapplication

US 6,791,013 B2patent which was prior published as a patentapplication (US 2002/0068359 A1)

US 6,197,585 C1 re-examined patent; claims may be unchanged,amended or canceled; appear to only be published inOfficial Gazette (OG)

re-exams are requested by applicant or third party

US RE038,571E1

re-issued patent; claims may be broadened ornarrowed; re-issuances are requested by applicant

US

2004/0177423P1

first publication of plant patent application

US PP15,114 P2 plant patent which was not published as a patentapplication

US PPnn,nnn P3 plant patent which was published as a patentapplication

(published prior to 2 Jan 2001)

Assigned code Code meaning

A patent

B re-examined patent

E re-issued patent

P plant patent


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^ kind codes did not appear on the face of patents

Europe

Europe follows WIPO standard ST.50 for corrections.

Exemplarypubl no. Code meaning

A1 patent application published with the search report

A2 patent application published without the search report

A3 search report published with the front page (bibliometricdata) of the application

A8 correction of front page data of A1 or A2; only frontpage re-published

A9 correction of application; complete reprint of documentA1 or A2 or A3

B1 granted patent

B2 amended specification (e.g., claims) of granted patent

B8 correction of front page data of B1 or B2; only frontpage published

B9 correction of application;

Wn* indicates that the correction affects all types of mediaand products (electronic, paper, etc); a supplementarycode used in combination with the original code (e.g.,W1A1); number n indicates the number of corrections(e.g., 1 is first correction; 2 is second correction)

*The W codes are printed on the front page of the document. As they are confusing,hypothetical examples follow:

The following events occur in the order listed.

A patent application is published as EP 999999 A1

An error is discovered in the front page data.The front page is republished in paper and on CD as an A8 type of publication and the front pageshows EP 999999 A8; in the field (15) Corrected information, the code W1A1 is shown.

Errors are discovered in the claims.

The entire specification is republished in paper and on CD as an A9 type and front page showsEP 999999 A9; in the field (15) Corrected information, the code W2A1 is shown.


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WIPO (encompasses PCT applications)

An application filed at WIPO (World Intellectual Property Organisation) is published 18 monthsafter the earliest related patent application is filed in the home country.

A Patent Examiner at the WIPO receiving office performs a prior art search and sends asearchreportto the applicant. The search report is also published, either as an attachment to the patentapplication document or separately depending on whether or not the search report is ready atthe time of publication of the application.

Exemplary publno.

Code meaning

WO 1999/001560A1

patent application published with the search report

WO 2001/073119A2

patent application published without the searchreport

WO 2001/073119A3

search report published with the front page(bibliometric data) of the application

Republications

If an application is re-published to make corrections or amendments on the first page, in the bodyof application, or in the claims, the kind codes (A1, A2, A3) are appended with furtherdesignators.

Note that in the PCT Gazette (www.wipo.int/ipdl/en) publication of an A3 document isconsidered to be a republication and is marked as such in the results list.

A corrected application will have the mark CORRECTED VERSION at the top of the first pageof the publication. It will also note on the front page where information can be found about thecorrections. See for example, WO 2001/073119.

Kind Code

pre-June2001

Code meaning

A1L an A1 application, republished with modified+ claimscompared to the A1

A1M an A1 application, republished with modified first page

or text

A2L an A2 application, republished with modified claimscompared to the A2

A2M an A2 application, republished with modified first pageor text

A3M an A3 search report, republished with modified front


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page

+modified can mean that there are either amendments or corrections or both

After June 2001, the designators A1, A2, A3 are retained and an R code (from R1-R9) isappended. For example A1 R1; A2 R6; etc)

These designators can be found in the Cambia IP Resource database output, but are not seen onthe front page of the printed publication.

Additional Kind Code

post-June 2001

Code meaning

R1 Amended claims

R2 Additional search report

R3 Revised search report

R4 Late published search report

R5

R6 Correction of text (e.g., corrected drawings)

R7

R8

R9 Revised search report translation

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What is the difference between a filing dateand a priority date?
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The terms filing date and priority date are often used interchangeably, but they are not thesame. The filing date is the date when a patent application is first filed at a patent office. Thepriority date, sometimes called the "effective filing date", is the date used to establish thenovelty and/or obviousness of a particular invention relative to other art.

The priority date may be earlier than the actual filing date of an application. If an application

claims priority to an earlier parent application, then its priority date may be the same as theparent.

There are a number of situations where a patent application

may claim priority to an earlier application. These include:

Continuation applications (including continuations, divisionals, andCIPs). A patent application may claim priority to an earlier filed parentapplication. When this occurs, the priority date of the new application isusually the same as the priority date of the parent application.

Domestic applications based on foreign or international filings. If apatent application is first filed in a foreign country, or as an international

(PCT) application, and then filed domestically (usually within a year theforeign or international filing), then the application that is filed domesticallymay claim the filing date of the application in the foreign country as itspriority date.

Patent filings based on US provisional patent applications. In the US,an applicant may file a provisional patent application, and then file a full-length application within one year. In this case, the priority date for the full-length application is the date of the provisional application filing.

In many cases, a patent application claims priority to a series of applications. For example, acontinuation application may claim priority to a parent utility application, which claims priorityto a US provisional application. The new application may then claim priority to the first filed

application in the series, which in this case, is the provisional application.

If a patent application is an original, non-provisional patent application, not a continuationapplication, and not previously filed in another country, its filing date is usually the same as itspriority date.

Can IP rights protect plants?There are five basic methods by which an entity may claim that it has a legal right to intellectualproperty, to the partial exclusion of the rights of others, in plants and plant products. Each of thefive available methods are discussed below, with particular reference to the mechanisms that are


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used in the United States, Europe and Australia, where the systems are of longer standing andwidely used. Under the Agreement on Trade-Related Aspects of Intellectual Property Rights(TRIPS) each country must implement such mechanisms, although there are local variationspossible, illustrated below by a section on India, which is implementing asui generis system (asystem conforming to TRIPS but having its own national character) different from those listedabove.

1. Patents on Plants

1. Utility Patents

1. What is the scope of the right to claim a patent?

2. Types of allowable claims

3. Inclusions and Exclusions

4. Standards of patentability and the rights granted

5. Exemptions

2. Plant Patents

1. Limits on the types of plants that can be covered by plantpatents

2. Patentability requirements are less stringent for plant patents

3. Plant patents confer an exclusionary right

4. Dual patenting

2. Plant Breeders Rights

1. Requirement for protection under TRIPs

2. International Union for the Protection of Plant Varieties (UPOV)

3. Some examples of mechanisms for claiming IP rights to plants insignatory countries

1. Plant Variety Protection Certificates (United States)

2. Plant Breeders Rights (Australia)

3. Community Plant Variety Rights (European Union)

4. A TRIPS-conforming sui generis system (India)

3. Trade Secrets

1. What is a trade secret?

2. When are trade secrets used with respect to IP claims in plants?

4. Genetic Mechanisms1. Hybrids

2. Genetic Use Restriction Technologies (GURTs)

5. Examples of contracts not involving an exclusionary right conferred by anational government

1. Material Transfer Agreements (MTA)
http://en.wikipedia.org/wiki/Agreement_on_Trade-Related_Aspects_of_Intellectual_Property_Rightshttp://en.wikipedia.org/wiki/Agreement_on_Trade-Related_Aspects_of_Intellectual_Property_Rightshttp://en.wikipedia.org/wiki/Agreement_on_Trade-Related_Aspects_of_Intellectual_Property_Rightshttp://en.wikipedia.org/wiki/Agreement_on_Trade-Related_Aspects_of_Intellectual_Property_Rights


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2. Bag Labels

3. Technology Use Agreements (TUA)

6. Appendices

1. European Union Members

1. Patent Claims on Plants

In some countries (including the United States, Australia and Europe) plants can be covered bypatent claims provided that the patent applications are able to meet all of the necessary standardsand requirements that exist in that country for patentability. Under the Trade-Related Aspects ofIntellectual Property Agreement which binds World Trade Organization members, membercountries that choose not to provide such mechanisms for plants under their national patentsystem must provide an alternative way in which an entity may claim that it has a legal right tointellectual property, to the partial exclusion of the rights of others, in plants and plant products.Some examples other than patentsper se are discussed in section 2.

A. Utility Patents*

In most countries, plants and inventions directed to plants or plant products (e.g. seed) are noteligible for a patent grant, but some (including the United States and Australia) provide that anentity may make claims to a time-limited right to exclude others from use of plants and plantproducts, provided that the legal criteria for patentability are met. While the patent legislation ofeach jurisdiction is different, the requirements and rights awarded to patentees are substantiallysimilar.

* The term "Utility Patent" is used to distinguish between patents and other specific forms ofintellectual property claims that exist in some jurisdictions, "Plant/Petty/Innovation Patents".Utility patents in the United States are comparable to the standard patents that are awarded bothin Australia (under the Patents Act (1990)) and in Europe.

i) What can be patented?

In the United States, any living organism that is the product of human intervention (such as bysome breeding process or laboratory-based alteration) qualifies as a composition of matter,which is patentable (Diamond v Chakrabarty (1980) 447 US 303). As a result, plants arepatentable subject matter (35 U.S.C. 101). Furthermore, the United States has extended patentprotection to plants produced by either sexual or asexual reproduction and to plant partsincluding seeds and tissue cultures (Ex parte Hibberd(1985) 227 USPQ 433).

In Australia, the Patent Act (1990) allows all technologies to be patented (except 'human beingsand the biological processes for their production') provided that there is an "invention", definedas 'an innovative idea which provides a practical solution to a technological problem'.

In addition or as an alternative to obtaining a patent through the patent office in individualEuropean countries, patent grants in nearly all European countries can be gained from filing atthe European Patent Office and registering the allowed claims in national patent offices. Thismeans of patenting is controlled by the European Patent Convention (EPC). Historically, eachEuropean country was governed by their own national patent laws, however the introduction ofDirective 98/44/EC (effective in all European Union Member States 30th July 2000) aims toharmonize protection for biotechnological inventions (including plant protection) amongst the
http://www.patentlens.net/daisy/patentlens/g3/tutorials/2333.htmlhttp://www.patentlens.net/daisy/patentlens/g3/tutorials/2333.html


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European Union members. Thus, each member country is required to bring their national laws inline with the Directive, although some may not yet be fully in compliance.

ii) Types of allowable claims

Utility and standard patents may be used to claim exclusionary rights in

new varieties of plants (U.S. only), transgenic plants,

plant groups,

individual plants and their descendants,

particular plant traits,

plant parts,

plant components (e.g. specific genes or chromosomes),

plant products (e.g. fruit, oils, pharmaceuticals),

plant material used in industrial processes (e.g. cell lines used in cultivation

methods), reproductive material (e.g. seeds or cuttings),

plant culture cells,

plant breeding methodologies, and

vectors and processes involved in the production of transgenic plants.

Note that this list provides examples and is not exhaustive.

iii) Inclusions and Exclusions

Natural source material should not be coverable by patents as exclusionary rights in any country

in the world, because natural source material is not novel (see below).In the U.S. and Australia individual plant varieties are patentable. In Europe, individual plantvarietiesper se are notpatentable, however, a plant which is characterized by a particular gene(as opposed to its whole genome) is not included in the definition of a plant variety and istherefore patentable.

In Europe, transgenic plants are patentable if they are not restricted to a specific plant variety, butrepresent a broader plant grouping. The European Directive considers plant cells to be"microbiological products" and as a result are patentable.

EXAMPLE

While bushwalking, Amy discovers a plant which nobody has ever previously seen or

documented. Can Amy obtain a patent for the plant?

No. Amy can not patent the plant as it is natural source material and is not novel (see below).

iv) Standards of patentability and the rights granted

The legal criteria for patentability are substantially similar across all jurisdictions. In order toshow that the plant, plant technology or plant product of interest is an invention:


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the patent application must show:

1) novelty

2) non-obviousness, or an inventive step

3) usefulness (United States) or industrial applicability (Europe, Australia)

4) enablement

5) claim clarity

6) written description

7) best mode (United States only)

From the date that a patent is granted, the patent holder has the exclusive right to exploit theinvention or authorize another person to do so until the patent expires. Patent rights areconsidered personal property and may be assigned to other parties.

A utility patent grants the owner the right to exclude others from:

1) making,

2) using,

3) selling or offering for sale or

4) importing

the protected invention for a 20 year period* from the earliest file date.

*If a patent application was filed prior to June 8, 1995, the patent term of protection in theUnited States is 17 years from the date of issuance.

EXAMPLE

John is the sole owner of a patent for herbicide resistant corn plants. He becomes aware that hisformer co-worker Julie is making and selling the same patented corn plant. What can John do?

John, as the patent owner has the exclusionary right to stop others from making and selling hisinvention. Julie is therefore infringing John's patent, and John can bring a lawsuit forinfringement or ask that Julie take out a llicense.

v) Exemptions

Exemptions to patent infringement that are relevent to patenting of plants are provided in somejurisdictions.

In United States case law, an 'experimental use exception' to patent infringement was thought

to exist which allowed researchers free access to the invention in order to use it for experimentalpurposes. However, based on the decisions in recent cases the doctrine certainly no longer existsand it is highly doubtful whether the doctrine ever actually existed.

In Australia, limited exemptions are defined within the legislation. The 'prior use' exemptionallows someone who was utilizing the patented product or process before the priority date of aclaim to continue using the patented product without infringement. The use of a patented producton board a foreign vessel that accidentally comes into the patent area is also exempted frominfringement.


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The EU Directive 98/44/EC provides a 'farmer's privilege'. Under the Directive, farmers areallowed to use patent protected seeds freely for their own use and the resulting plant material isfree from protection. Farmers are not permitted however, to re-sell the patented seed. MemberStates are able to define their own exemptions to patent infringement (see, for example, PatentsAct 1977 (UK), s60 (5))

Although not an exemption per se, in the United States but not in Australia or Europe, aninventor has a grace period allowing for retrospective application for a patent. Patent rights arenot automatically foregone by public disclosure, such as publication or commercialisation,provided that a patent is applied for within 12 months of the disclosure. Note that other countries(e.g., Japan) have a limited grace period, and other countries are considering instituting one.

EXAMPLE

Tom, a U.S. resident, was the first person to extract oil from sunflower plants. He presents hisfindings at a biotechnology conference. It is not until after his presentation he realises that hissunflower oil may be of commercial significance. Is it too late for him to patent his invention?

Tom can still obtain a patent in the United States provided he applies within twelve months of the

conference and the oil or its method of extraction meets the requirements for patentability.

B. Plant Patents

Specific plant patents are only available in very few countries.

The Plant Patent Act was enacted by US congress in 1930. It was introduced primarily to benefitthe horticulture industry by encouraging plant breeding and increasing plant genetic diversity.

i) Limited types of plants are eligible for protection

The Plant Patent Act 1930 (35 U.S.C. 161) provides for:

patent protection of all asexually reproduced plantsEXCEPT:

1) tuber-propagated plants and

2) plants found in an uncultivated state.

Plant patents encompass newly found plant varieties as well as cultivated spores, mutants,hybrids and newly found seedlings on the proviso that they reproduce asexually. Asexualreproduction is defined as any reproductive process that does not involve the union of individualsor germ cells. It is the propagation of a plant to multiply the plant without the use of geneticseeds. Modes of asexual reproduction in plants include grafting, bulbs, apomictic seeds,rhizomes and tissue culture.

Specifically excluded from protection under the Plant Patent Act are tuber-propagated plants andplants found in an uncultivated state.

ii) Patentability requirements are less stringent for plant patents

The requirements that must be fulfilled in order to obtain a Plant Patent are the same as those forutility patents (see Patents (iv) above). However, the IMPLEMENTATION of theserequirements is LESS STRINGENT.


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For example, the Plant Patent Act provides that plant patents will not be rejected or invalidated ifthe plant is not fully described or enabled. It does however, require that the new variety isdescribed as complete as reasonably possible.

It is also not necessary to deposit the claimed plant at an official depositary.

The ordinary test of 'non-obviousness' is not applied to plant patents. This is primarily due to the

fact that it is extremely challenging to develop a new plant variety that is stable and can bepreserved by asexual reproduction.

iii) Plant patents confer an exclusionary right

A plant patent gives the patent holder the right to:

exclude others from asexually reproducing, using, selling, offering for sale or importing into theUnited States the reproduced plant (or any of its parts)* for a period of 20 years.

In contrast to utility patents, plant patentsonly protect a single plant or genome and theprotection conferred is quite limited. It does not protect the plant characteristics, mutants of the

patented plant nor technologies associated with its cultivation. Because plant patents are grantedon the entire plant, it follows that only one claim per plant patent is permitted.

U.S. courts have held that a twelve month grace period also applies to plant patents (35 U.S.C102(b)) whereby a disclosure of a new plant variety or a granted patent of the new variety in aforeign jurisdiction does not destroy patentability provided that the disclosure or foreign patentoccurred less than 12 months prior to the plant patent application being lodged in the U.S. Ifpublication has occurred in any other country prior to the 12 month grace period, the plant patentapplication will be refused (Ex parte Thomson, 25 USPQ 2d 1618 (BPAI 1992)). Thisinterpretation of the law has met with proposals to increase the grace period to 10 years on thebasis that often times plants from foreign jurisdictions are held in quarantine by the USDA for aperiod of more than 12 months, thereby nullifying patentability. To date this idea remains aproposal.

*ThePlant Patent Actwas amended on 27 October 1998 to extend the exclusive right to plantparts obtained from protected varieties but it is not applied retroactively.

iii) Dual protection is allowed

A utility patent and a plant patent can both be obtained to protect the same plant.

It is possible to obtain protection for the same plant under both a utility patent and a plant patentin the United States at the same time, provided that the requirements for patentability for bothtypes of patents are fulfilled.

EXAMPLE

Marc and Crystal want to obtain protection in the U.S. for their new variety of asexuallyreproducing plant. They also wish to protect a special aluminum device that contains specificamounts of hormones and other nutrients needed to ensure the plants survival. What types ofprotection are available?

Marc and Crystal can obtain a plant patent for the new variety plant provided they meet therequirements for patentability. However the device required to guarantee survival of the plant isunable to be protected by this system. Utility patents would provide protection to BOTH the


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special device and the plant variety provided the criteria for patentability are fulfilled.

2. Plant Breeder's Rights* (PBRs)

While in the U.S. plant varieties can be protected under the patent system, in the majority of

jurisdictions including Australia, the protection of plant varieties under the patent legislation isnot permitted. Having a form of protection in place that is available to new plant varieties isthought to be important in order to encourage and promote plant breeding, encourage theimportation of foreign varieties, promote the exportation of plant varieties and generally benefitthe market place.

* The term Plant Breeder's Rights is synonymous with Plant Variety Rights.

A. Requirement for plant protection under TRIPs

Members of the World Trade Organisation (WTO) are bound by their membership to adhere tothe Agreement on Trade-Related Aspects of Intellectual Property (TRIPs). The Agreement setsout the minimum standards of intellectual property protection the member countries are required

to provide.One of the most controversial provisions of the Agreement surrounds protection of plantvarieties. Article 27(3)(b) of the Agreement allows countries to exclude plants and essentiallybiological processes for their production from their patent system of protection. The same Articlehowever, states that countries must "provide for the protection of plant varieties either by patentsor by an effectivesui generis system or by any combination thereof". Under the Agreement, acountry can implement more than one form of plant protection.

The meaning of "sui generis" is one of the contentious issues surrounding the agreement. It isgenerally believed that the term enables member countries to design their own system ofprotection for plant varieties if they have elected not to use their patent system for plantprotection. What is a sufficient system to qualify as "sui generis" remains to be seen.

B. International Union for the Protection of New Varieties of Plants (UPOV)

The International Union for the Protections of New Varieties of Plants (UPOV) is anintergovernmental organization and not a 'treaty' as such. Countries are not obliged to join UPOVas a result of their affiliation with any other organization or the ratification of any specific treaty.Membership is purely voluntary.

Each member of the organization becomes bound to the UPOV Convention. The Conventionrequires member countries to provide an intellectual property right specifically for plantvarieties. This form of IP protection is often referred to as Plant Breeder's Rights (PBR). As aresult of the PBR, the plant breeder is granted a legal monopoly over the commercialization ofher plant varieties. Protection allows the breeder to try to recover the costs associated with the

development of the variety. By conferring protection on plant varieties, UPOV also aims toprovide an incentive to individuals or companies to invest in plant breeding, thereby providing apositive stimulus in the plant breeding industry. The rights granted are for a specific time only(depending on the plant variety), and upon expiration of the time period, the protected varietypasses into the public domain.

The UPOV Convention has been revised three times, however not all member countries arebound by the latest convention (1991). Approximately 26 countries remain bound by the 1978


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Convention, while Spain and Belgium are bound by the original Convention (1961). The maindifferences in the two latest agreements can be seen in the table below:

UPOV

Convention1978 1991

Requirements Distinct, Uniform and Stable Distinct, Uniform, Stable, New

ProtectsCommercial use of reproductivematerial of the variety

All plant varieties and products includingplants that are derived

Duration ofProtection

15 years from application date formost species. 18 years for trees andvines

20 years from application date for mostspecies. 25 years for trees and vines

Breeder'sExemption

Yes. Acts for breeding anddevelopment of other varieties arenot prohibited.

Optional. The decision to include anexemption is dependent on each membersnational legislation.

The requirements for protection under UPOV require distinctness. The variety must bedistinguishable from any other variety which is publicly known at the time of filing theapplication. The variety must have predictable characteristics and be able to be reliablyreproduced. The additional requirement under the 1991 Convention states that the variety mustbe 'new'. The word 'new' is held to mean that the variety has not been sold or otherwise disposedof by the breeder for commercial purposes prior to filing for protection. However, similarly to autility patent, natural source material is not protectable. The UPOV Convention does allow a 12month 'grace period' for sales of the new variety before protection is no longer available (Article6(1b)).

The latest Convention protects all plant varieties including those that are 'essentially derived' i.e.

plants which require the protected variety for their production. The protection offered to the plantvariety is an exclusionary right.

Protection confers the right to exclude others from:

1) producing or reproducing,

2) propagating,

3) offering for sale,

4) selling or other marketing,

5) exporting,

6) importing or7) stocking for any of the above purposes

the protected variety.

However, the protected plant can be used for non-commercial acts (provided they are doneprivately) and for experimental purposes without infringement.

Considering that many UPOV members are also bound to the TRIPs agreement (due to theirWTO membership), UPOV provides a framework by which countries can implement a


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protection system that generally fulfills the TRIPs requirement of providing 'an effective suigeneris system' (see s2A).

C. Plant protection mechanisms provided by sample countries

i) Plant Variety Protection Certificates (United States)

The United States is bound by the TRIPs Agreement and is also a UPOV member. Because theUnited States offers patents for plant varieties, technically it does not need to also provide a suigeneris system.

In the U.S. the UPOV Convention is implemented by the Plant Variety Protection Act (1970).Changes to the Act made by Amendments in 1994 extended statutory protection to F1 hybridsand tuber propagated plants and generally brought the United States into compliance with the1991 UPOV Convention. The Plant Variety Protection Act is administered by the U.S.Department of Agriculture, which issues Plant Variety Protection Certificates (PVPC) forqualifying plant varieties.

The Plant Variety Protection Act protects sexually reproduced plants, including first generation

(F1) hybrids and tuber propagated plants (e.g. potato varieties). The requirements and term ofthis protection offered are exactly the same as those outlined in the UPOV Convention.

The Plant Variety Protection Act requires that a deposit of seeds of the new variety be made at anauthorised depositary, and in the case of F1 hybrids, seeds of the parents must also be deposited.

The U.S. has in its national legislation only a limited farmer's exemption. In the case of farmers,protected seed may be "saved" for replanting on their own individual holdings provided that it isnot sold to any third parties who use it for reproductive purposes.

Simultaneous protection by both a utility patent and a PVPC is allowed.

(J.E.M. AG Supply v Pioneer Hi-Bred International((122 S. Ct. 593, 2001)).

*Any variety which was protected prior to the 1994 amendments is subject to the originalPlantVariety Protection Act (1970)which only provides 18 years of protection for non-woody plants.However, applications submitted prior to April 4, 1995 (effective amendment date) may be re-submitted in order to secure the extended term of protection provided by the amendments.

ii) Plant Breeder's Rights (Australia)

Similarly to the U.S., Australia is both a WTO and UPOV member and has implemented theUPOV protection system as a mechanism for complying with TRIPs. Australia is signed onto the1991 Convention. As a result, plant varieties are protected in Australia by a Plant Breeder's Right(PBR) under the Plant Breeder's Rights Act (1994).

The requirements, term and rights conferred by the UPOV Convention are implemented under

the Plant Breeder's Rights Act.

In Australia, a PBR is obtained from and administered by the Plant Breeder's Rights Office, incontrast to patents which are granted by IP Australia. Recently the Plant Breeder's Rights Officewas brought within IP Australia.

A choice is usually made between the two protection systems depending on the level ofprotection sought and the ability to satisfy the necessary requirements. PBRs are generallyobtained much faster than a patent due to the lack of examination and are also much cheaper to


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obtain. They are therefore desirable where protection is required in a short period of time andthere is no need to acquire rights over the use of the variety for non-commercial purposes. Wherecomprehensive exclusive rights are desired, protection under the patent system would be moresuitable.

iii) Community Plant Variety Rights (European Union)

Plant variety protection in the European Union is a result of the European Convention(Regulation 2100/94/EC), which is based on the 1991 UPOV Convention. It was introduced inorder to harmonise and streamline the method of plant variety protection available throughoutEurope.

The Community protection of plant varieties (CPVR) enables applicants, on the basis of oneapplication, to be granted a single intellectual property right which is operative throughout allcountries that are members of the European Union. A CPVR can only be transferred or ceasedwithin the EU Community on a uniform basis. That is, a CPVR can only be valid (or cancelled)across all EU countries, not selected individual countries.

The CPVR exists alongside individual European countries' national plant protection legislation

as an alternative form of protection. As a result, it is not possible to hold protection for the sameplant variety under both the Community and a national system at the same time. Where a CPVRis granted in r elation to a variety for which a national right has already been granted, thenational right is suspended for the duration of the CPVR.

The CPVR confers protection to all 'new' botanical genera and species, including their hybrids,provided that the varieties meet exactly the same requirements as outlined under the UPOVConvention. A CPVR is issued by the Community Plant Variety Office in Angers, France.

EXAMPLE

George wishes to obtain a CPVR for his new plant variety in Germany. He is unsure as towhether his CPVR will provide protection in Italy and Switzerland.

The CPVR obtained by George will confer protection to George in ALL European Unioncountries. There is no need to register individually in each country. George will automatically begranted protection in Italy, however not in Switzerland as Switzerland is not a member of the EU.

iii) A sui generis system (India)

Many developing countries have an agricultural economy that is geared towards the domestic asopposed to the export market. Such an economy is dependent upon farmer-produced seed ofvarieties that are both maintained and further adapted to their local growing conditions by small-scale farmers. Developing countries with such an economy want to acknowledge the rights offarmers arising from their contribution to crop conservation and development and the sharing of

their knowledge on adaptive traits. They also want to encourage farmer-to-farmer exchange ofnew crop/plant varieties that are adapted to the local growing conditions. As a result, somedeveloping countries have chosen a sui generis system of plant protection that is not compliantwith UPOV in that it allows farmers to improve and adapt the seed in order to make it moresuccessful in the local conditions.

Under the Indian Protection of Plant Varieties and Farmers' Rights Act 2001, plants are dividedinto four main classes: new varieties, extant varieties, essentially derived varieties and farmers'varieties. The regime for plant protection is similar to that set out by UPOV and the requirements


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Bred case it was held that the accidental inclusion of inbred seed in bags of commerciallyavailable first generation seed by Pioneer Hi-Bred was not enough to destroy the secrecysurrounding its "genetic message". Reasonable precaution had been taken to keep the "geneticmessage" contained in the inbred seed out of the public domain.

Under Australian law it is theoretically possible that specific varieties of plants may be afforded

protection under the doctrine of confidential information or trade secrets, however to date, nocases involving the doctrine and plant varieties have been brought before the courts. As a result itis currently unclear as to the extent of protection available under the doctrine of trade secrets.

4. Genetic Mechanisms

A. Hybrids

In some cases, specialized plant breeding can present an alternative to intellectual propertyprotection.

Breeders often select individual plants that display beneficial or attractive traits such as a fastgrowth rate in comparison to other plants or an increase in either herbicide or disease resistanceetc. The breeder then crosses these plants with individual plants of different varieties that alsodemonstrate attractive traits. The resulting progeny are called hybrids.

Seeds resulting from hybrids show an extremely poor ability to reliably reproduce the trait ofinterest in their progeny or next generation.

It therefore becomes necessary for the farmer to purchase new seed for subsequent plantings.Hybrid selection therefore becomes a way for the plant breeder to protect their varieties fromexploitation as they are safe in the knowledge that the farmer or purchaser can only access thetrait reliably for one generation. Farmers and others must obtain more seed from the breeder ifthey wish to continue to use the same hybrid plants.

Hybridisation therefore serves as a way of not only creating new plant varieties with attractivetraits but ensuring some sort of protection for new commercial plant varieties. Although thismethod of protection is inexpensive and is not subject to legal requirements or restrictions, thebreeder has no enforceable remedy available to him/her, except under trade secret law (seeabove) or by contractual agreement.

B. Genetic Use Restriction Technologies (GURTs)

Genetic Use Restriction Technologies (GURTs) is technology that allows the control of geneexpression of an organism, further allowing constraints or restrictions on the use of the organismor trait. The term GURT was developed by the Lead Author (CAMBIA's CEO) of the first studycommissioned by the United Nations Convention on Biological Diversity (CBD).

There are two main types of GURTs: variety-level GURT (v-GURT) and trait- level GURT (t-GURT).

v-GURT causes the seeds of the affected plant variety to be sterile in contrast to t-GURT whichresults in the expression of a selected trait. t-GURT introduces a mechanism for trait expressioninto the variety which can only be turned on, or off, by treatment with specific chemicalinducers. The gene of interest can thus be expressed at particular stages or generations of thecrop.


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In addition to intellectual property rights, plant breeders in principle are able to use GURTS tostrengthen the protection of newly developed plant varieties. The use of v-GURTs requiresfarmers to buy seeds from the breeder each season and therefore could be used as a way ofavoiding the farmers privilege exception to patentability that exist in Europe. However, in somesituations v-GURTS are advantageous to farmers as they reduce the need for tillage and do notsprout inappropriately. t-GURTs require the farmer to purchase chemical inducers from thebreeder in order for the farmer to be able to make use of the specific traits of the variety ieherbicide resistance.

It should be emphasized that at the time of editing (2007) there are no commercial example ofGURTs known anywhere in the world. The initial example, dubbed Terminator by a CivilSociety Organization, was from a prophetic patent application that had not reduced thetechnology to commercial practice.

5. Contracts

The following types of agreements are all governed by contract law as opposed to intellectualproperty law. There are no international agreements that regulate the law of contracts.

A. Material Transfer Agreements

Material Transfer Agreements (MTAs) are legal agreements made between a provider and arecipient party when research material is being transferred between institutions.

Material most often transferred includes plant varieties, transgenic plants, cell lines, germplasm,vectors, chemicals, equipment or software.

The MTA itself contains a written description of the material to be transferred and any limits onthe material that the provider wishes. For example some providers may limit the use of thetransferred material to non-commercial situations or to a specific field of research. In some caseswhere publication of results occurs which involve the material it may be necessary to

acknowledge the source of the material.The terms and conditions of the MTA also usually outline the ownership rights, confidentialityprovisions and any third party transfer restrictions that the provider of the material wishes toimpose.

The agreement acts as a contractual agreement that is often used to protect the rights ofownership of the provider and also to protect the material from unauthorized use.

B. Bag Labels

Bag label contracts are another form of legal protection which can be applied to plants,especially seeds. An explicit contract is described on a bag label which is normally sewn into theseal of a bag. By opening the bag and breaking the seal, the purchaser agrees to comply with the

contract.

These contracts are similar to what is commonly known as "shrink wrap licenses" in software.As yet the strength of protection conferred by the bag label is not firmly established.

C. Technology Use Agreements

A technology use agreement is an agreement most commonly between technology suppliers andfarmers which usually controls the right to plant a given seed on a specific area of land often for a


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certain period of time.

The agreement provisions can also include restrictions on the use of proprietary traits in thecreation of new varieties and also gives permission for the technology supplier to access thefarmers property to check for violations.

This form of property right enforcement has been implemented by producers of agronomic traitsin the U.S. and other countries. In some cases, the producers reserve the right to inspect the fieldof the contracting farmer and to take samples to ensure the compliance of the farmer with theTUA.

A breach of a Technology Use Agreement gives rise to a claim for damages if a breach ofcontract occurs.

Aren't patents necessary as incentives fordevelopment of new inventions, for examplein the medical industry?The patent system can serve as an incentive for innovation, but it doesn't exist simply to rewardinnovators. Indeed, it explicitly does not reward all types of innovation.

The central purpose of the patent system is to encourage public disclosure of new inventions, in away that enables them to be used. It should provide a monopoly, therefore, only on inventionswhich would not otherwise have been disclosed or obvious. There are many discoveries or bitsof knowledge that cost money and create value but are not patentable, such as the discovery of a

natural correlation, data on where to place a new shop and where in the shop to placepurchasable items for most effective marketing, cosmetic changes to the way something ispresented, non-original but critically important replicated steps for clinical testing and scale-upetc.

In affirming a judgment of patent invalidity Lord Justice Jacob made the following observation:

"There are old or obvious ideas which take a lot of work, expense and time to develop and turninto something practical and successful. Without the incentive of a [patent] monopoly, people


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may not do that work or spend the time and money. The Fosamax case, Teva v Gentili [2003]EWHC 5 (Patent), [2003] EWCA Civ 1545, is an example of an obvious invention which costlots to bring to market. But patent law provided no protection for all that investment becausethe basic invention was obvious. The courts' job is not, however, to uphold any claim to amonopoly for an idea which requires investment and risk to bring to market, only those for ideaswhich are new, non-obvious and enabled. "

Angiotech Pharm., Inc. v. Conor MedSystems Inc., [2007] EWCA Civ 5, 50(Court of Appeal2007)(Jacob, L.J.) , aff'g, [2006] EWHC 260 (Pat)(Pumfrey, J.)(High Court 2006)

Thus, there is no sense in which a large company "deserves" a patent because it has made a largeinvestment, unless it has provided enabling public disclosure of a new invention. Unfortunatelymany patent applications in biological sciences do not describe inventions, but discoveries, andmany barely meet the standard of "enabling public disclosure", for example those providingsequence listings or structural descriptions in a form that is not accessible to the public to searchreadily.

Furthermore, patents sometimes serve as barriers to investment, both intellectual and financial.Countless small and medium enterprises have discovered that venture capitalists are reluctant to

invest in their technologies because of uncertainty as to whether there is freedom to operate inview of pending patent claims by other entities. "Patent pending" is sometimes a powerful wayto impose a particular partnership arrangement, even though another pathway might have beenmore innovative.

Cover Page - Bibliographic information

The cover page presents information that is mainly bibliographic in nature. None of thisinformation, including the abstract, has any legal import for interpreting the patent. The dataprovides notice mainly of historical facts and identifying elements, such as application filing dateand serial number.

A bracketed number, which is found adjacent to each data sub-section on the cover page, refersto a specific field that the Patent Office uses for internal identification purposes. For ease ofdiscussion, the same numbers are referred to in this primer.

[19] Type of the publication (e.g., U.S. Patent) and first inventor's name.[11] Patent number.[45] Date the patent is issued[54] Title of the patent.[75] Inventors names and place of residence[73] Assignees (patent owners) and their place of business[21] Application number, which is assigned by the patent office.[22] Filing date of the patent application.[63] Related applications that the patent is claiming priority from.

[51] "International Classification" code, which is also known as the " International PatentClassification (IPC)".[52] U.S. classification codes that the patent relates to and which are assigned by the PatentOffice Examiner. The bolded code is considered to be the most relevant classification.[58] Field of Search contains the U.S. Classification codes that the Examiner searched for priorart.[56] References made of record in the application process for the patent. Following thereferences, the names of the Primary Examiner at the Patent Office, the Assistant Examiner (if


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any), and the Attorney, Agent or Firm of record are listed.[57] Abstract, which is a short description of the invention.Finally, at the bottom of the cover page, the number of claims and drawings in the patent aredisplayed.

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