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4-Patents: More details on the US plant patent lawsuit



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TITLE:  Major patentability issue sprouts from a seed sale
SOURCE: ISB NEWS REPORT, by Phillip B. C. Jones, PhD.
        J.D. Seattle, Washington pbcj@wolfenet.com
DATE:   Issue June 1999

----------------- archive: http://www.gene.ch/ ------------------


MAJOR PATENTABILITY ISSUE SPROUTS FROM A SEED SALE

Is it possible to obtain utility patent protection for a plant in
the United States? Many patentees have assumed that this question
was answered in the affirmative years ago. Yet the Court of
Appeals for the Federal Circuit will be considering this very
issue in the near future.


Cultivation of a Lawsuit

The case reportedly began when Marvin Redenius, president of Farm
Advantage, bought 600 bags of Pioneer Hi-Bred International Inc.
corn seed from another company, and then resold the bags to his
customers (1). In February 1998, Pioneer sued Farm Advantage and
several of its distributors for infringement on one or more of
seventeen patents that covered hybrid and inbred corn seed
products and corn plants. Pioneer sold the seed products covered
by the patents under a limited label license that does not allow
for resale. Rather, the license is limited to the use of the seed
to produce grain or forage. According to Pioneer's complaint, the
defendants had resold Pioneer's seed products without
authorization.

In response, Farm Advantage asserted a counterclaim asking the
court to declare that all of Pioneer's patents listed in its
complaint are invalid. Farm Advantage's theory was that the Plant
Variety Protection Act (PVPA) is the exclusive federal mechanism
for granting patent-like protection for sexually reproducing
plants.

Under the PVPA, an individual can obtain a certificate of plant
variety protection for any new sexually reproduced or tuber
propagated variety. A PVPA certificate can also protect
genetically related derivatives of the plant variety. At this
time, a utility patent can provide protection for plant
biotechnology processes, genes, seeds, plant parts, cultivars,
plants, and hybrids. Whereas PVPA certificates are issued by the
Plant Variety Protection Office (Department of Agriculture), the
Patent and Trademark Office (PTO) issues utility patents.
According to Farm Advantage, sexually reproducing plants, like
the plants covered in Pioneer's utility patents, are not proper
subject matter for a US utility patent and may only be protected,
if at all, by a PVPA certificate. All defendants joined in a move
for summary judgment on the counterclaim, effectively asking the
judge to dismiss the infringement action, because Pioneer's
patents are invalid as a matter of law(2). Pioneer argued that
the patent statute itself confers upon the PTO the authority to
grant patents on sexually reproducing plants. In addition,
Pioneer contended that the authority for granting such utility
patents is bolstered by a US Supreme Court decision, Diamond v.
Chakrabarty, which supported the view that patentable subject
matter includes "anything under the sun made by man"(3). In a
third line of argument, Pioneer noted that the PTO has routinely
issued over one thousand utility patents related to plants during
the last 15 years. Although Congress has had the opportunity, it
has not expressly excluded sexually reproducible plants as
suitable subject matter for a utility patent. Accordingly,
Congress' silence implies a lack of intent to limit utility
patents.

On August 19, 1998, Senior Judge Donald E. O'Brien denied the
defendants' motion for summary judgment. With regard to Pioneer's
third argument, Judge O'Brien noted that Congress has amended the
patent statute and the PVPA at least 18 times since the
Chakrabarty decision. Yet Congress has not amended any statute
that would preclude utility patent protection of sexually
reproduced plants. According to Judge O'Brien, it "boils down to
the fact that it is Congress' job to answer" the question raised
by the defendants.

A Budding Controversy Judge O'Brien's decision was not
surprising. His reasoning was consistent with a PTO Board of
Appeals decision that a utility patent is available for subject
matter that can be protected by either a plant patent or the PVPA
(4). However, several weeks later, Judge O'Brien seemed to have
changed his mind, and he certified the patent validity issue for
consideration by the Federal Circuit Court of Appeals. The
Federal Circuit has agreed to hear the appeal (docket No. 99
1035) with oral arguments currently scheduled for June 8, 1999.

Pioneer has suggested that the Federal Circuit only took the
appeal to settle the patentability issue in favor of utility
patents for plants. It is true that courts are generally cautious
about reading limitations into patent laws if Congress has not
suggested these limitations. Although the Federal Circuit may
only want to nip the issue in the bud, the court has not been
taking a particularly expansive view of biotech patent scope
during the last few years. So, the Federal Circuit may have a
surprise up its sleeve, and declare that plants cannot be
protected by utility patents.

Even if the Federal Circuit decided that utility patents could
not claim plants, there are a number of options available for
intellectual property protection in the United States. For
example, transgenic plants can be protected indirectly if the
transgene is covered by a patent, because the use of the
transgene to produce the transgenic plant would infringe claims
to the transgene. Moreover, a patented method for making a new
form of plant would extend protection to the plant product of
that method. Of course, protection would still be available under
the PVPA.


Sources

1. Scott Kilman, "Biotech Industry Sees Big Threat to    Patentability of Modified Plants," The Wall Street Journal
   [Interactive Edition]. March 3, 1999.
2. Pioneer Hi-Bred International Inc. v. J.E.M. AG Supply Inc.,
   49 U.S. Patents Quarterly 2nd Edition 1813 (N.D. Iowa 1998).
   The basic facts of the case can be found in a related
   memorandum opinion (No. C 98-4016-MWB) at the website of the
   United States District Court, Northern District of Iowa
   (http://www.iand.uscourts.gov/), and in the American
   Intellectual Property Law Association's amicus brief, which is
   available at http://www.aipla.org/.
3. Diamond v. Chakrabarty, 206 U.S. Patents Quarterly 193. 1980.
   Here, the Supreme Court decided that a new, human-made strain
   of bacteria is patentable subject matter under 35 USC section
   101.
4. Ex parte Hibberd, 227 U.S. Patents Quarterly 443 (BPAI 1985).



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