"ENTER: Human-Made Inventions, Living or Not"
Patent and Trademark Office
Welcome Mat

Hayden A. Carney

The US patent statute is sufficiently broad in scope that it opens the doors of the Patent and Trademark Office (PTO) to applicants who seek to patent living things made by them. However, those doors are closed to applicants who seek to patent products of nature. That is the essence of a December 2001 decision by the United States Supreme Court.

The Court's decision, from which two justices dissented, was rendered in J.E.M. Ag Supply Inc. v. Pioneer Hi-Bred International Inc. ("Pioneer Hi-Bred"). The inventions at issue in that case pertained to inbred and hybrid corn seeds on which Pioneer Hi-Bred had obtained several conventional patents. Both types of seeds are "products of man," not products of nature. This difference was the key to the Supreme Court's decision.

Section 101 of the patent law defines the subject matter that can be patented. Section 101 provides that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor" if other conditions and requirements are met. Twenty-one years ago, in Diamond, Commissioner of Patents and Trademarks v. Chakrabarty, a divided Supreme Court ruled that Section 101 is sufficiently broad in scope that the PTO should not have refused an application to patent a genetically engineered strain of bacteria on the ground that bacteria are living things outside the scope of the patent laws. The bacteria in question were engineered to feed on petroleum and are useful in attacking marine oil spills. The Court observed that the relevant distinction is "not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions."

The PTO understood and paid heed to the Chakrabarty decision. By the time the Pioneer Hi-Bred case reached the Supreme Court, the PTO had granted over 1800 utility patents for plants, plant parts, and seeds.

Pioneer Hi-Bred owned 17 of them. As noted, they covered inbred and hybrid corn seed products. Inbred corn plants differ from products of nature by being highly inbred for several generations to produce a plant line which is homogenous and has desirable characteristics. Inbreds are often weak and have a low yield; their value lies primarily in the making of hybrids. Hybrid seeds result from the crossing of two inbred lines. Hybrid seeds are valuable because they produce strong and vibrant plants with selected, highly desirable characteristics. However, hybrid plants generally do not reproduce true to type, so farmers who wish to grow more hybrid plants generally need to buy more hybrid seed.

Pioneer sold its hybrid seeds in packaging that licensed use of the seeds only for production of corn and/or forage, not for propagation or for development of hybrid or different variety seed. J.E.M. Ag Supply, dba Farm Advantage, bought and resold Pioneer's bags of seeds, in violation of that limited license. Pioneer sued for infringement of its patents.

Farm Advantage's defenses in the infringement litigation included an attack on the validity of Pioneer's patents. Farm Advantage argued that plants and seeds are protected solely by two other statutes: The Plant Patent Act of 1930 ("PPA") and the Plant Variety Protection Act of 1970 ("PVPA"). As compared to Section 101 of the patent statute, the PPA and PVPA provide different, and arguably lesser, types of protection. For example, the PPA protects only against unauthorized asexual reproduction of plants patented thereunder. The PVPA, although encompassing sexually reproduced plants (plants propagated from seeds), only prohibits a restricted range of uses of plants. Farm Advantage argued that the PPA and the PVPA evidenced an intent by Congress that Section 101 was not open to plants and seeds, and that the PPA and the PVPA provided the exclusive pathways to protection of that subject matter. That defense was not accepted by either the trial court or the Court of Appeals for the Federal Circuit.

The Supreme Court also rejected Farm Advantage's contention that the PPA and the PVPA have the effect of removing plants and seeds from the ambit of the general patent statute. The Court's majority, concurring, and dissenting opinions deal with the rather esoteric and technical problem of statutory construction, namely, when do later acts of Congress have the effect of limiting or nullifying provisions of an earlier, more general statute. A solid majority of the Court concluded that, because of their more restricted eligible subject matter and more restricted scopes of regulated conduct, the PPA and PVPA did not close the general patent statute to coverage of plants and seeds. In reaching that conclusion, the Court emphasized several things that should be encouraging to all persons who would seek U.S. patent protection, including:

• "In choosing such expansive terms as 'manufacture' and 'composition of matter', modified by the comprehensive 'any', Congress plainly contemplated that the patent laws would be given wide scope."
  
  
• Section 101 "is a dynamic provision designed to encompass new and unforeseen inventions."
  
  
• "Denying patent protection under Section 101 simply because such coverage [for plants] was thought technologically infeasible in 1930, however, would be inconsistent with the forward-looking perspective of the utility patent statute. As we noted in Chakrabarty, 'Congress employed broad general language in drafting Section 101 precisely because [new types of] inventions are often unforeseeable.'"

The Supreme Court has declared that the general patent statute opens the doors of the Patent and Trademark Office to admission of unknown technologies and developments crafted by human mind and hand. The PTO - and patent practitioners - will continue to grapple with the ever broadening landscape of patentable subject matter.