MPEP § 1605 — MPEP § 1605
Current through: 2022-07-01

1605-Specification and Claim 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1600 

 Section 1605 
 

 
 
 
 
 
 1605 Specification and Claim [R-11.2013]

 
 35 U.S.C. 162 
 Description, claim. 

 No plant patent shall be declared invalid for noncompliance with
 section
 112 if the description is as complete as is reasonably
 possible.
 

 The claim in the specification shall be in formal terms to the plant
 shown and described.
 

 

 
 37 CFR 1.163 Specification and arrangement of application elements in a plant
 application. 

 
 (a) The specification must contain as full and complete a disclosure
 as possible of the plant and the characteristics thereof that distinguish the same
 over related known varieties, and its antecedents, and must particularly point out
 where and in what manner the variety of plant has been asexually reproduced. For a
 newly found plant, the specification must particularly point out the location and
 character of the area where the plant was discovered.
 

 (b) The elements of the plant application, if applicable, should
 appear in the following order:
 
 
 

 

 (1) Plant application transmittal form.

 (2) Fee transmittal form.

 (3) Application data sheet (see § 1.76 ).
 

 (4) Specification.

 (5) Drawings (in duplicate).

 (6) The inventor's oath or declaration (§ 1.162 ).
 

 
 

 (c) The specification should include the following sections in
 order:
 
 
 

 

 (1) Title of the invention, which may include an introductory
 portion stating the name, citizenship, and residence of the applicant.
 

 (2) Cross-reference to related applications (unless included in
 the application data sheet).
 

 (3) Statement regarding federally sponsored research or
 development.
 

 (4) Latin name of the genus and species of the plant
 claimed.
 

 (5) Variety denomination.

 (6) Background of the invention.

 (7) Brief summary of the invention.

 (8) Brief description of the drawing.

 (9) Detailed botanical description.

 (10) A single claim.

 (11) Abstract of the disclosure.

 
 

 (d) The text of the specification or sections defined in paragraph
 (c) of this section, if applicable, should be preceded by a section heading in
 upper case, without underlining or bold type.
 

 
 

 
 37 CFR 1.164 Claim. 

 The claim shall be in formal terms to the new and distinct variety of
 the specified plant as described and illustrated, and may also recite the principal
 distinguishing characteristics. More than one claim is not permitted.
 

 

 The specification should include a complete detailed description of the
 plant and the characteristics thereof that distinguish the same over related known
 varieties, and its antecedents, expressed in botanical terms in the general form followed
 in standard botanical textbooks or publications dealing with the varieties of the kind of
 plant involved (evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather than a
 mere broad nonbotanical characterization such as commonly found in nursery or seed
 catalogs. The specification should also include the origin or parentage and the genus and
 species designation of the plant variety sought to be patented. The Latin name of the genus
 and species of the plant claimed should be stated and preceded by the heading set forth in
 37 CFR
 1.163(c)(4) . The specification must particularly point out where,
 e.g., location or place of business, and in what manner the variety of plant has been
 asexually reproduced. 
 

 Form Paragraphs 16.01, 16.09, and 16.10 may be used to object to the
 disclosure under 37 CFR
 1.163(a) .
 

 ¶ 16.01 Specification, Manner of Asexually Reproducing

 The application is objected to under
 37 CFR
 1.163(a) because the specification does not “particularly point out
 where and in what manner the variety of plant has been asexually reproduced.” Correction is
 required.
 

 

 ¶ 16.09 Specification, Less Than Complete Description

 The disclosure is objected to under
 37 CFR
 1.163(a) because the specification presents less than a full and
 complete botanical description and the characteristics which distinguish over related known
 varieties. More specifically: [1] .
 

 

 ¶ 16.10 Specification, Location of Plant Not Disclosed

 The disclosure is objected to under 37 CFR 1.163(a) because the specification does not particularly point out the location and character of the area where the plant was discovered.
 

 

 Where color is a distinctive feature of the plant, the color should be
 positively identified in the specification by reference to a designated color as given by a
 recognized color dictionary or color chart. 
 

 Form Paragraphs 16.02 and 16.03 may be used to object to the disclosure or
 reject the claim, respectively, because of a lack of a clear and complete disclosure with
 regard to colors.
 

 ¶ 16.02 Colors Specified Do Not Correspond With Those Shown

 The disclosure is objected to under
 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 because the [1] colors specified fail to correspond with those
 shown.
 

 

 ¶ 16.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st
 Paragraph, Non-Support for Colors
 

 The claim is rejected under
 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 as being unsupported by a clear and complete disclosure with regard to [1] 
 colors, for the following reasons: [2] .
 

 

 If the written description of a plant is deficient in certain respects
 (see, e.g., In re Greer, 484 F.2d 488, 179 USPQ 301 (CCPA 1973)), a
 clarification or additional description of the plant, or even a wholesale substitution of
 the original description so long as not totally inconsistent and unrelated to the original
 description and photograph of the plant may be submitted in reply to an Office action. Such
 submission will not constitute new matter under 35 U.S.C. 132 . Jessel v.
 Newland, 195 USPQ 678, 684 (Dep. Comm’r Pat. 1977).
 

 The rules on Deposit of Biological Materials, 37 CFR
 1.801 - 1.809 , do not apply to plant patent
 applications in view of the reduced disclosure requirements of 35 U.S.C. 162 , even
 where a deposit of a plant has been made in conjunction with a utility application
 ( 35 U.S.C.
 101 ).
 

 A plant patent is granted only on the entire plant. Only one claim is
 necessary and only one is permitted. A method claim in a plant patent application is
 improper. An example of a proper claim would be “A new and distinct variety of hybrid tea
 rose plant, substantially as illustrated and described herein.”
 

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 1601-Introduction: The Act, Scope, Type of Plants Covered 

 1602-Rules Applicable 

 1603-Elements of a Plant Application 

 1604-Applicant, Oath or Declaration 

 1605-Specification and Claim 

 1606-Drawings 

 1607-Specimens 

 1608-Examination 

 1609-Report of Agricultural Research Service 

 1610-The Action 

 1611-Issue 

 1612-UPOV Convention 

 1613-Right of Priority Based upon Application for Plant Breeder’s Rights 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:27