On December 10th, 2001, the Supreme Court held that Utility patents may be issued for plants under 35 U.S.C. 101 despite distinct protections available under the Plant Variety Protection Act and the Plant Patent Act. Affirming the Federal Circuit’s ruling by a majority vote, Justice Clarence Thomas explained that the broad scope of Section 101 was established in Diamond v. Charkrabarty and that nothing in the PVPA or the PPA precluded granting utility patent coverage to plants. The Court also used as one of it’s arguments the fact that while Congress has had ample opportunity to modify existing utility patent protections afforded to plants, chose not to do so. This argument was one which BIO advanced in its brief before the Court.
Throughout history, agricultural science has been an important economic force in the global community. Biotechnology utilizes advanced plant breeding technologies to introduce beneficial traits to the crops grown for food and fiber.
These innovative agricultural developments have been accelerated by the promise of intellectual property protection on resulting agricultural products. The U. S. Congress has provided three distinct but complementary forms of intellectual property protection for different types and degrees of agricultural innovation. These protections are: 1.) The utility patent, granted under 35 U.S.C. 101 for technical inventions; 2.) The plant patent, for vegetatively propagated plants - plants grown from cuttings rather than seeds, including ornamental flowers and fruit cultivars; and, 3.) The Plant Variety Protection Certificate, a form of intellectual protection created in 1970 for plants grown from seed.
The U.S. Patent and Trademark Office (PTO) administers the first two protections. The third is separate from the patent statute and is administered by the Department of Agriculture.
On October 3, 2001 the Supreme Court heard the case of J.E.M. Agricultural Supply v. Pioneer Hi-Bred. In this case, Pioneer Hi-Bred filed a patent infringement suit against J.E.M. Agricultural Supply (JEM) for selling hybrid corn seeds patented by Pioneer Hi-Bred. JEM counter sued, which led to the Supreme Court oral hearing.
JEM argued that Pioneer's patents were invalid because Congress had superseded the original utility patent law when it created the two, specialized intellectual property protections for plants - the plant patent and the PVPC. JEM held that it is not liable under standard patent law because genetically engineered plants cannot be protected with utility patents.
The Supreme Court first outlined the different rights and types of protection afforded agricultural products under each of the three intellectual property systems. The Court also tried to discern the intent of Congress in creating plant patents and PVPCs, and asked whether utility patents impose a higher burden to protection.
In weighing the questions, the Court referred several times to the earlier decision of Diamond v. Chakrabarty, a 1980 case where the Supreme Court held in that another living thing (in that case, an artificially generated oil-eating bacterium) constituted patentable subject matter. The sweeping language of Chakrabarty indicated that "everything under the sun made by man," presumably including plants and other agricultural products, is patentable. The Court's questions also revealed that for more than 15 years, the PTO has granted utility patents to people seeking to patent plants.
BIO filed an amicus curiae (1.6 MB pdf) in support of Pioneer Hi-Bred. BIO's brief sets forth the following arguments:
Intellectual property forms to protect plant innovations have evolved along with science. Alternatives to utility patent protection, such as plant patents and PVPCs, were fashioned before agricultural science had progressed to the point that modified plants could be described with enough precision to meet the more stringent standards for a utility patent.
The existence of overlapping but distinct forms of intellectual property rights for a single article, such as a plant, does not suggest a conflict between any of the respective statutes that create such rights. There are other similar examples, such as a patented computer running copyrighted software, where different types of intellectual property rights protect different aspects of the same physical item.
Utility patents, plant patents, and PVPCs serve the public interest in different but complementary ways. Congress has designed a complementary system that offers the strongest property rights to the plant inventor who fulfills the requirements for a utility patent, while maintaining more limited protection for the plant breeder who fulfills the less exacting requirements for a plant patent or PVPC.
The Supreme Court has already reviewed the relevant section of the Patent Act, and reads it broadly. In its Chakrabarty decision, the Court found no limitations or exclusions in the statute authorizing utility patents.
Congress has repeatedly made clear that it is not only aware of, but also endorses the PTO's practice of issuing utility patents on plant inventions. In floor statements, oversight hearings, and treaty ratifications, Congress has repeatedly demonstrated its awareness of concurrent protection in plants via utility patents, plant patents and PVPCs. Despite enacting 15 significant changes to patent law since 1985, Congress has never expressed any objection to the PTO's longstanding practice of granting utility patents for plants.
What is at stake?
If the Supreme Court agrees with JEM's argument, several hundred existing plant utility patents may become unenforceable. Consequently, contractual agreements and pending negotiations involving the rights conferred by such patent claims would be significantly complicated. Commercial producers of seed varieties, such as Pioneer Hi-Bred, would be unable to regulate the use of patented seed by farmers, which would disrupt thousands of mutually beneficial relationships that exist today between farmers and patent owners.
Supporting JEM's argument will not negate all patent rights to plants in question. For the method of creating a modified plant, and the DNA products used to introduce a genetic trait into a plant, will still be protected. However, supporting JEM's position would fail to protect the most relevant commercial embodiment of the technology - the transgenic plant and its propagating material.