The ongoing COVID-19 pandemic caused significant changes to the manner in which businesses must operate, including patent offices around the world and the businesses and law firms that file patent applications. As a result, the U.S. Patent and Trademark Office (USPTO), like many other patent offices around the world, made certain concessions to allow patent examination to continue despite the challenges. Those concessions include some aimed specifically at prosecution of plant patent applications.

At the beginning of the pandemic, the USPTO provided relief to plant patent applicants by allowing the filing of plant patent application via the patent electronic filing systems. However, the USPTO still was requiring submission of a physical, paper certified copy of foreign priority documents from foreign Plant Breeders’ Rights (PBR) offices.

However, because of the pandemic, many foreign PBR offices no longer are issuing certified copies in paper form, but rather are providing only electronic certified copies. Thus, it was impossible for applicants to submit paper certified copies of certain PBR priority applications.

The USPTO now has provided additional relief to remedy this issue. The USPTO recently issued a Notice providing relief for delays in filing certified copies of foreign PBR applications due to the COVID-19 outbreak. Specifically, the USPTO suspends the requirement in 37 C.F.R. § 1.55(f) and 1.55(g) for filing the certified copy of foreign PBR applications.

In order to obtain the relief, an applicant must:

1. request a paper certified copy from the foreign PBR office prior to the payment of issue fees, wherein the foreign PBR office was unable to process the request due to the pandemic,
2. timely file an interim copy of the foreign PBR application (see 37 C.F.R. 1.55(f)(1) and 1.55(j)), and
3. file a request for suspension of the requirement for submission of the certified copy no later than the date of payment of the issue fees.

If the USPTO grants the request, the patent will issue with the foreign priority claim on the front page of the patent despite the fact that the paper certified copy of the foreign PBR application has not yet been submitted.

Importantly, the USPTO is not waiving the filing of the paper certified copies. Once the foreign PBR office resumes providing paper certified copies, the patent owner must request a paper certified copy from the foreign PBR office within two months after the date the foreign PBR office resumes processing requests for paper certified copies, and submit the paper certified copy to the USPTO within one month after the paper certified copy is issued from the foreign PBR office.

Panitch Schwarze’s team is deeply experienced at helping clients protect sexually and asexually reproduced novel plant varieties, as well as transgenic plants, through plant and utility patents, PVP certificates, and PBR certificates, both domestically and internationally.

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With a Ph.D. in cellular and microbial biology, Dr. Stephany Small works with clients ranging from large life science companies to individual inventors. She focuses her practice on the life sciences fields, including biologics, pharmaceuticals, treatment methods, novel plant varieties, transgenic plants, and diagnostic testing methods/apparatus.