Name: Bonita Morales
Description: Bonita currently works in the ag-biotech industry, but she and her father have been breeding grapevines through cross-pollination in their family greenhouse for more than 15 years. Her father has been making small-batch wine for friends and family for decades. She wants to patent one of their more robust plants in preparation for using it in a new business venture she has been working on.
Progress to Date: Bonita has selected a plant from their breeding process that has similar characteristics to the one she helped develop with her university. She was the one who recommended the same parent cultivars for her university research. She has confirmed that her plant is a good candidate for asexual reproduction, and she wants to apply for a plant patent.
Scenario: Bonita needs to speak with a patent attorney to make sure her cultivar is unique enough not to be considered prior art. She located an attorney with an advanced science degree and experience with plant patents and set up an appointment.
I understand you want to apply for a patent on your grapevine cultivar. Are you familiar with this process?
I have read up on a few things and know I should probably apply for a plant patent or a utility patent.
That’s right. We’ll navigate that decision once we determine if your plant is novel, that is, new and not previously known to or used by the public. Your plant also must be non-obvious, which means it cannot be an obvious variation on or combination of plants already known to or used by the public.
Okay, I’m pretty knowledgeable about the current grapevine cultivars, and I think it should be, but you might want to look into the patent on my previous university’s cultivar. That’s the only one I’m worried about.
I will do a deep dive to make sure it is both novel and non-obvious. I will also do an extensive review of your publications and search for any prior related publications, so we can be prepared for the patent examination process, which can take quite a while. Many first-time applicants are rejected at first. If that happens, I will help you engage in a dialogue with the patent examiner, help you understand any required modifications, and get your patent if possible.
That’s good to know. What could prevent me from obtaining a plant patent?
Well, there are many things. We’ll need to make sure your plant doesn’t fall into any categories of prior art. Like, if there are existing patents or any printed publications as I mentioned. Has it been used by the public or otherwise been made available to the public? Has it been sold or even described in any sales materials?
I’m a little worried about public use. We have been supplying our community with similar vines for a while, but we haven’t been selling them.
I will help you uncover any and all possibilities. This is a complex process, and I’ll be with you every step of the way.
Scenario Outcome: The patent attorney helps Bonita navigate the complex patent process only to come up with an initially rejected application. The communication from the patent examiner was thorough and clear and provided all the information Bonita needed to understand the problems. It included the need to clarify the novel nature of her cultivar and an apparent overlap with prior art from too broad a claim. The attorney works with Bonita and the patent examiner to narrow the patent’s scope, and Bonita collects data to clarify the uniqueness of her cultivar. She is still waiting to hear the final word on her revised application.
View Bonita’s Pitch Deck