In addition to the visit to the office of the USTR, the CIOPORA-US Delegation met with the Acting Director of the USPTO, Joseph Matal, and office’s leading staff members and plant examiners.
The main point on the agenda of the meeting with Mr. Matal was the missing EDV concept within the US Plant Patent Act. (See additional information on the EDV Concept – or lack thereof – in this article.) Although it is the task of the US legislator, and not the USPTO, to change the Plant Patent Act, the matter is of relevance for the USPTO which is the body that administers this piece of law. The CIOPORA-US Delegation explained the background of the EDV Concept in the UPOV 1991 Act and the consequences of its absence in the US Plant Patent Act. We made clear that not having an EDV concept in this Act results in a discrimination of the ornamental and fruit breeders, compared to the seed agricultural breeders, which benefit from the EDV Concept in the US Plant Variety Protection Act (PVPA), and compared to Utility Patent holders who benefit from the general principle of dependency in the US Patent law. It was agreed to continue the discussion and to study possible options to address the matter.
In the meeting with the Plant Examiners, one main topic was Minimum Distance, which corresponds to the requirement of distinctness/non-obviousness in the US Plant Patent Act. The CIOPORA-US Delegation reminded the Examiners that the Plant Patent exists to grant to the breeder an exclusive right over his variety and that a too-small distance between varieties would weaken or even abolish such exclusive right.
It was also suggested that the USPTO Examiners contact their colleagues in the UPOV-style examination offices to share information inter alia on reference varieties, which is a precondition for a complete search of prior art / varieties of common knowledge.
Another crucial point on the agenda was to receive more clarity on which acts and publications would trigger the start of the one-year period of grace in the US. In a nutshell, the Examiners seem to follow the policy that written publications alone would not trigger the grace period, as no one would be able to develop a plant only on the basis of a written publication. Therefore, only written publications combined with a sale or offer for sale would have the potential to trigger the period of grace.
CIOPORA and the USPTO have been working together for a number of years, but we believe face-to-face meetings such as the one in Washington this week are vital to the cooperation with the USPTO. Our association will make a strengthened relationship with this, and other, US governmental entities a priority.