Propagation Prohibited? Understanding Plant Patent Protection

Photo by Prudence Earl on Unsplash

Emily Schmidt, Associate Member, University of Cincinnati Law Review

I. Introduction

An annual survey from the National Gardening Association indicated that because of the coronavirus pandemic, forty-two percent of experienced gardeners participated in lawn and garden activities more in 2021 compared to previous years.[1] For newcomers to the plant scene, nearly half of survey respondents stated they began gardening because of its mental health benefits, as the pandemic provided some with greater free time to explore healthy hobbies.[2]  

The indoor houseplant industry has also blossomed over the past few years. Pre-pandemic, houseplant sales across the United States reached $1.7 billion in 2019.[3] Today, some plant breeders say certain houseplants are in “such high demand” that they “can’t be grown fast enough.”[4]

Even non-commercial plant collectors are generating profits by selling plant cuttings.[5] For many plant species, plant cuttings can be used to asexually reproduce and clone the parent plant—a common method of plant propagation.[6] Etsy, a popular online retail platform for individuals and small businesses, currently lists over 40,000 various plant cuttings available for sale.[7]

Some houseplants and garden plants are sold with labels that include a patent number or a phrase such as “Propagation Prohibited” or “Plant Patent Applied For (PPAF).”[8]  Plant patents are a type of intellectual property that protect newly cultivated plant varieties and prohibit consumers from cloning and reselling the plant for personal gain. A variety of rose plant was the first to receive a plant patent in 1931.[9]

As the market for plants continues to rise, consumers should understand what a plant patent is, and how plant patent rights are legally enforced. This article will supply a brief overview of plant patents in the United States. Next, the article will discuss how plant patents impact consumers’ ability to propagate plants, and what it means to infringe a plant patent.

II. Background

President Hoover signed the Plant Patent Act into law in May 1930.[10] Codified today as 35 U.S.C.S. § 161, the law creates an avenue for “whoever invents or discovers and asexually reproduces any distinct and new variety of plant” to obtain a plant patent.[11] There is one exception—plants classified as “tubers” (such as potato plants) are specifically excluded from plant patent eligibility. To be patentable, a plant must be cultivated rather than discovered naturally.[12] The plant must also be capable of asexual propagation, meaning the plant reproduces without a seed.[13]

The United States Patent and Trademark Office (“USPTO”) grants three types of patents: utility, design, and plant patents.[14] Less than one percent of patent applications are plant patents; in 2020, plant patent applications accounted for 1,171 of the 646,244 total patent applications.[15] The USPTO grants plant patents for a nonrenewable period of twenty years, starting from the date an inventor files the patent application.[16] The extensive plant patent application process requires providing the USPTO with information such as the title of the invention and name of inventor, Latin name of the genus and species of the plant claimed, a photograph and detailed botanical description of the plant, and a description of the most notable or novel and important characteristics of the plant.[17]

Most plant patent applications involve the assistance of a licensed patent attorney. Accounting for attorney fees and filing fees, applicants can expect to spend between four thousand and eight thousand dollars to obtain a single plant patent.[18]

III. Discussion

The plant patent promotes innovation and incentivizes indoor and outdoor plant cultivators to invest in plant breeding. A plant patent gives the patent holder the right to decide who can propagate the newly invented plant for the twenty-year patent protection period.[19] This prevents commercial sellers and individual consumers from “asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, . . . .”[20] If a person infringes on a plant patent by asexually propagating the plant or selling the patented plant without permission from the patent holder, the patent holder may sue the infringer for patent infringement in federal court.[21]

Plant patent litigation is uncommon. Plant patent holders—typically business entities like commercial plant nurseries or cultivators—most often bring infringement claims against commercial sellers, [22] and not against individual consumers.[23] However, in 1960, a citrus nursery sued an individual for plant patent infringement after the individual purchased two patented orange trees from the nursery and proceeded to reproduce and sell the plant seven years later.[24] The parties disputed whether the nursery had properly informed the individual of the orange tree’s patented status.[25] Most patent holders notify the public of a patent by adding the patent number to a plant’s label when sold.[26] If the patent holder fails to label the plant, damages cannot be awarded for an infringement claim unless “the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”[27]

In practice, if an individual consumer propagated cuttings of a Pearls and Jade Pothos (a popular patented houseplant)[28] to gift to a friend, legal repercussions are unlikely, although this would constitute patent infringement. A plant patent holder may be more likely to intervene if an individual consumer decides to list a patented plant cutting for sale online. Patent holders might monitor online sales platforms and request patented plant listings to be removed; this would place the infringer on notice even if they did not previously know of the plant patent. Many sophisticated plant cultivators retain in-house attorneys on staff, likely tasked with protecting the intellectual property of the company by monitoring patent infringement.[29]

IV. Conclusion

Before propagating a plant, consumers should understand how plant patents limit the ability to legally reproduce some plant varieties. However, lax enforcement of patent infringement against individual consumers indicates that propagation limitations primarily impact commercial plant sellers. This could change in the future, so plant propagating enthusiasts should continue to stay informed of this area of law. If gardening and indoor plant care continue to rise in popularity as they have in recent years, patent holders may be motivated to pursue claims against all types of infringers to maximize profits during a plant patent’s lifespan.

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[1] The Nat’l Gardening Ass’n, National Gardening Survey 2021 Edition 14 (2021).

[2] The Nat’l Gardening Ass’n, What Gardeners Think Survey 2021 Edition 45 (2021).

[3] Matthew Boyle, The One Thing Millennials Haven’t Killed Is Houseplants, Bloomberg (Apr. 11, 2019), https://perma.cc/5HUP-U4DY.

[4] Elle Wignall, Plants + Cocktails? Meet the Des Moines Area Nurse Combining the Two, Amid Pandemic-Inspired Houseplant Boom, Des Moines Register (Aug. 30, 2021), https://perma.cc/B7E4-H9Z9.

[5] See, e.g., Tricia Goss, Plant Cuttings: How to Make Money Selling Them, Don’t Waste Your Money (Aug. 3, 2021), https://perma.cc/6U9L-SHJJ; How to Grow and Sell Plants from Cuttings, Ask! Wet & Forget (Sept. 22, 2021), https://perma.cc/RH9K-9EYT; Elizabeth Yuko, How to Make Money Selling Cuttings of Your Houseplants, Lifehacker (May 9, 2021), https://perma.cc/DF8F-8N2J.

[6] See David Trinklein, Plant Propagation, University of Missouri Extension (July 2016), https://perma.cc/9M37-9DAZ.

[7] Etsy, https://www.etsy.com/search?q=plant%20cuttings (last visited Dec. 1, 2021).

[8] Teo Spengler, Plant Patents and Propagation—Is It Okay To Propagate Patented Plants, Gardening Know How (Oct. 11, 2021), https://perma.cc/NG9C-9ES4.

[9] D. Lawrence Tarazano, The Patents Behind the Roses You Receive on Valentine’s Day, Smithsonian Magazine (Feb. 9, 2017), https://perma.cc/ETA5-V3LV.

[10] Imazio Nursery, Inc. v. Greenhouses, 69 F.3d 1560, 1563 (Fed. Cir. 1995).

[11] 35 U.S.C.S. § 161.

[12] Id.

[13] See Trinklein, supra note 6.

[14] Patent Process Overview, United States Patent and Trademark Office, https://perma.cc/F3WJ-4ASW (last visited Dec. 1, 2021).

[15] See U.S. Patent Statistics Chart Calendar Years 1963-2020, United States Patent and Trademark Office, https://perma.cc/WB5L-SZC8 (last visited Dec. 1, 2021).

[16] General Information About 35 U.S.C. 161 Plant Patents, United States Patent and Trademark Office, https://perma.cc/M393-2HVP (last visited Dec. 1, 2021).

[17] Id.

[18] Noah Adam, How Much Does a Patent Cost?, Patent Rebel (June 19, 2019), https://perma.cc/UXW9-ML7P.

[19] See 35 U.S.C.S. § 163; General Information About 35 U.S.C. 161 Plant Patents, United States Patent and Trademark Office, https://perma.cc/M393-2HVP (last visited Dec. 1, 2021).

[20] 35 U.S.C.S. § 163.

[21] See 28 U.S.C.S. § 1338(a) (“The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.”).

[22] See, e.g., Wash. State Univ. v. Pro Orchard Mgmt. LLC, No. 2:20-cv-38, 2020 U.S. Dist. LEXIS 204359 (E.D. Wash. Nov. 2, 2020) (Plant patent holder bringing claim against orchard business); Driscoll’s, Inc. v. Cal. Berry Cultivars, LLC, No. 2:19-cv-493-TLN-CKD, 2021 U.S. Dist. LEXIS 204557 (E.D. Cal. Oct. 21, 2021) (Plant patent holder bringing claim against strawberry growing company); Pan-American Plant Co. v. Matsui, 433 F. Supp. 693 (N.D. Cal. 1977) (Plant patent holder bringing claim against plant nursery).

[23] But see Armstrong Nurseries, Inc. v. Smith, 170 F. Supp. 519 (E.D. Tex. 1958) (holding three individuals liable for infringement of several varieties of patented rose plants and awarding the patent holders $3,000 in damages).

[24] Nicholson v. Bailey, 182 F. Supp. 509, 511 (S.D. Fla. 1960).

[25] Id. at 511-12.

[26] See 38 U.S.C.A. § 287; Nicholson v. Bailey, 182 F. Supp. at 511.

[27] Nicholson v. Bailey, 182 F. Supp.at 511 (citing 38 U.S.C.A.).

[28] See R. J. Henny et al., New Florida Foliage Plant Cultivar: Pothos ‘Pearls and Jade’, University of Florida IFAS Extension 1-3 (Mar. 2011), https://perma.cc/UD6C-M753. Other popular houseplants currently under patent protection include Manjula Pothos, Raven ZZ Plant, Nanouk Tradescantia, and Philodendron Brasil. Costa Farms Patents, https://perma.cc/ED2E-Z6L7 (last visited Dec. 1, 2021).

[29] See, e.g., Career Opportunities: General Counsel, Fall Creek Farm & Nursery, https://perma.cc/6FZQ-L5WT (last visited Dec. 3, 2021) (Blueberry cultivator searching for an attorney who can ensure “appropriate asset protection strategy and implementation for all of Fall Creek’s intellectual property.”).