4-Patents: EPO and US Federal Ciruit decisions open new round of plant patenting
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----------------------------- GENET-news -----------------------------
TITLE: The turn of the century brings good news for plant patent
SOURCE: Phillip B. C. Jones, PhD., J.D. Seattle, USA
sent by ISB News Report - March 2000
DATE: March 3, 2000
-------------------- archive: http://www.gene.ch/ --------------------
The turn of the century brings good news for plant patent applicants
Referring to an announcement made by the European Patent Office (EPO)
in late December, decision for the whole seeds industry"(1). About
one month later, Herb Jervis, Chief Intellectual Property Counsel for
Pioneer Hi-Bred International Inc., declared that a decision by a US
court "provides a conducive environment for the development of new
varieties that will bring benefit to farmers, consumers, and the
environment"(2). Strange days, indeed.
The EPO delivers a turnaround in a legal interpretation . . .
The EPO case concerned an interpretation of Article 53(b) of the
European Patent Convention, which explicitly excludes from
patentability "plant or animal varieties or essentially biological
processes for the production of plants or animals." Is a claim to
particular type of transgenic plant equivalent to a claim to a plant
variety? At one time, the EPO thought so.
In 1995, an EPO board of appeals ruled against a patent issued to
Plant Genetics Systems for methods of producing plants that contain
herbicide-resistance genes, and the transgenic plants produced by
these methods(3). The Board's rationale was that a transgenic plant
can be considered a plant variety, and therefore, it is not
patentable. Since the EPO could no longer issue patents on transgenic
life forms, a backlog of transgenic plant and animal patent
applications began to pile up.
Reasoning along the lines of the Plant Genetics Systems case, the EPO
rejected an application filed by Novartis AG on transgenic plants
that contain genes conferring pathogen resistance. Novartis appealed
the 1997 decision to the EPO's Enlarged Board of Appeal, which
announced its ruling on December 20, 1999.
This board overturned the decision of the lower appeals board,
determining that the phrase "plant variety" should be interpreted
narrowly(4). The board noted that the International Convention for
the Protection of New Varieties of Plants (UPOV) defines "variety,"
in part, as a plant grouping delineated by the expression of
characteristics that result from a given genotype. Since a claim to a
transgenic plant does not further identify those characteristics
necessary to assess the homogeneity and stability of varieties within
a given species, the board reasoned, the claimed transgenic plant
does not define a single variety.
In light of the Novartis decision, the EPO has reportedly begun to
process about 1,200 patent applications for genetically engineered
plants and animals(1).
. . . while a US court verifies an assumption about US patent law
About two years ago, Pioneer Hi-Bred International Inc. sued Farm
Advantage and several distributors for infringement on one or more of
seventeen utility patents that covered hybrid and inbred corn seed
products and corn plants. In response, Farm Advantage asserted a
counterclaim requesting the district court to declare that all of
Pioneer's patents listed in its complaint are invalid. 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. Under Farm Advantage's theory, Pioneer might be able
to obtain protection by a Plant Variety Protection Act (PVPA)
certificate, if that.
The other defendants liked this idea, and they joined in a move for
summary judgment, asking the judge to dismiss the infringement
action. Although Senior Judge Donald E. O'Brien initially denied the
defendants' motion for summary judgment, he later decided to certify
the patent validity issue for consideration by the Federal Circuit
Court of Appeals.
The Federal Circuit heard oral arguments last June, and the court
decided the case on January 19, 2000(5). The verdict: Yes, it is
possible to obtain utility patent protection for a plant in the
United States. The court explained that the enactment of the PVPA did
not signal an intent to exclude plants from the patent statute.
The defendants had also argued that Pioneer could not obtain utility
patents for its plants in addition to PVPA certificates. The Federal
Circuit, however, pointed out that it is not unusual for more than
one statute to apply to a legal interest, noting that one may be able
to protect an ornamental design under both copyright and design
1. Schiermeier Q and Dickson D. 2000. Europe lifts patent embargo on
transgenic plants and animals. Nature 403:3.
2. Karr D. 2000. Federal Appeals Court affirms Pioneer's right to
patent seeds and plants. Pioneer Hi-Bred Press Release.
3. Abbott A. 1997. Euro-vote lifts block on biotech patents. Nature
4. Transgenic Plant/NOVARTIS II, G 01/98, (December 20, 1999). A copy
of this decision is available at the EPO Web site:
5. Pioneer Hi-Bred International Inc. v. J.E.M. AG Supply Inc., US
Patents Quarterly 2nd Edition, vol. 53, p 1440. (Fed. Cir. 2000). A
copy of this decision is available from the Federal Circuit Web site:
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