The U.S. Court of Appeals for the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences, which rejected plant patent applications covering two allegedly new and distinct oak tree varieties. In re Beineke, Nos. 2011-1459, -1460 (Fed. Cir. Aug. 6, 2012).
The Patent Applicant’s Discovery. The patent applicant, Walter F. Beineke, claimed that in 1980 he noticed in another person’s yard two white oak trees “that appeared to display superior genetic traits as compared to other white oak trees, such as excellent timber quality and strong central stem tendency.” At the time they were identified, one of the trees was approximately 118 years old; the other was 105 years old. Beineke planted acorns from each of the trees and, over several years, observed their progeny. He found that the trees grown from acorns displayed the same desirable traits as their parents. Beineke then asexually reproduced the trees and found that, in all material respects, the reproductions ran true to the originally discovered trees and to each other. Beineke applied to the U.S. Patent and Trademark Office (PTO) for plant patents on what he contended were two new and distinct varieties of oak trees.
Proceedings in the PTO. The patent examiner rejected the applications, concluding that there was insufficient evidence that the oak trees were not in an “uncultivated state” when Beineke found them. The U.S. Board of Patent Appeals and Interferences affirmed the rejection, also emphasizing a lack of evidence regarding the cultivated state of the trees. Beineke appealed to the Federal Circuit.
The Plant Patent Act. On appeal, the Federal Circuit explained that the U.S. Plant Patent Act of 1930, 35 U.S.C. § 161, et seq., provides for the award of a plant patent to anyone who “invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.” According to the court, recent jurisprudence clearly establishes two requirements for the award of a plant patent–that the inventor (1) “has ‘recognized [the plant’s] uniqueness and difference;” and (2) has “take[n] the step of asexual reproduction.” However, the court added, those two elements are not all that the Plant Patent Act requires.
The Parties’ Divergent Positions. Although Beineke and the PTO did not dispute the two foundational requirements for plant patent protection identified by the court, they took dramatically different positions regarding what other elements the Plant Patent Act might require. Beinke argued that the Act does not require the inventor to have played a role in the creation of the plant, and that mere discovery of a mature, novel plant variety is sufficient so long as the inventor has asexually reproduced it. The USPTO contended that the Plant Patent Act applies only to “the work of plant breeders who create new varieties of plants either intentionally or by accident.”
Patents and Plants Prior to the Plant Patent Act. In addressing the parties’ arguments, the court reviewed the Plant Patent Act in light of its legislative development and history. Since 1790, when the U.S. Congress first enacted the general utility patent statute, several legal principles posed obstacles to the patenting of discovered plants. First, although the general patent statute has long provided (and, in its current formulation, still does provide) that a utility patent may be awarded to one who “invents or discovers” a new, useful, and non-obvious innovation, the courts held that “mere naked discovery” is not a basis for granting such a patent. Instead, even the discovery prong of the statute requires some “exercise of the inventive faculty.” Singer Manufacturing Co. v. Cramer, 192 U.S. 265, 276 (1904). A second major limitation was the “belief that plants, even those bred by man, were products of nature, and therefore not subject to patent protection.” Imazio Nursery, Inc. v. Dania Greenhouses, 69 F. 3d 1560, 1563 (Fed. Cir. 1995).
The 1930 Plant Patent Act and Its 1954 Revision. As described by the court, when Congress enacted the Plant Patent Act in 1930, it “sought to change the existing rule that no plants could be patented while preserving the rule that plants found in nature were not patentable.” The legislative history of the 1930 statute made a clear distinction between “newly found plants”—which could not be patented—and “plants created or developed by plant breeders”—which were eligible for patents under the new law “because the plant breeder supplied the necessary inventive faculty.” In 1954, however, in reaction to the decision of the Patent Office Board of Appeals decision in Ex parte Foster, 90 U.S.P.Q. 16 (1951), Congress amended the Act to make plant patents more broadly available–including for “newly found seedlings” found in a cultivated state by the applicant. In the instant case, the Federal Circuit summarized the effect of the amendments as follows:
[B]y virtue of the 1954 amendments, Congress extended the plant patent statutes to cover newly found seedlings, but only if they were somehow the result of human activity (i.e., the cultivation of the land on which they originated), and not the chance find of a plant explorer in the wild.
The Court’s Conclusion. The court concluded that Beinke would not have been entitled to a patent under the pre-1954 Plant Patent Act because the oak trees were not “in any way the result of his creative efforts or indeed anyone’s creative efforts.” Although the 1954 amendments extended plant patent protection to newly found seedlings that are the result of human activity, Beinke admitted that the trees in question were not “newly found seedlings,” but were fully adult trees when he first encountered them. Focusing on the age of the plants at the time of their discovery, rather than the state of cultivation in which they were found, the Federal Circuit concluded that Beineke’s tree varieties were also ineligible for protection under the 1954 amendments to the Plant Patent Act.
Notes. Because it is easy for the uninitiated to become lost among the different U.S. intellectual property systems that are potentially applicable to plant innovations, it is appropriate briefly to enumerate and distinguish them.
- The Plant Patent Act, 35 U.S.C. § 161, et seq., applies only to asexually reproduced plants.
- The U.S. Plant Variety Protection Act of 1970, 7 U.S.C. § 2312, et seq. (PVPA), affords patent-like protection to sexually reproduced and tuber-propagated plants. The Plant Patent Act and the PVPA are, therefore, mutually exclusive intellectual property regimes.
- The most powerful U.S. intellectual property regime potentially applicable to plant innovation is the general utility patent system created by the U.S. Patent Act, 35 U.S.C. § 1, et seq.,which affords strong protection to inventions and discoveries that are novel, non-obvious, and useful.
- In Diamond v. Chakrabarty, 447 U.S. 303 (1979), a case dealing with genetically engineered microorganisms, the U. S. Supreme Court held that “a live, human-made microorganism” is eligible for a utility patent provided the elements of novelty, non-obviousness, and utility are present.
- In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001), the Supreme Court specifically confirmed that when Congress enacted the Plant Patent Act and the PVPA, it did not remove plants from the subject matter of the general patent scheme for utility patents. Therefore, a plant that meets the requirements of the Plant Patent Act or the PVPA may also be the subject of a utility patent if it satisfies the criteria of novelty, non-obviousness, and utility.