4-Patents: EPO and US Federal Ciruit decisions open new round of plant patenting

[GENETNL <genetnl@xs4all.be>]

----------------------------- GENET-news -----------------------------

TITLE:  The turn of the century brings good news for plant patent
        applicants
SOURCE: Phillip B. C. Jones, PhD., J.D. Seattle, USA
        pbcj@wolfenet.com
        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 
patent law.

Sources

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 
388:314-315.

4. Transgenic Plant/NOVARTIS II, G 01/98, (December 20, 1999). A copy 
of this decision is available at the EPO Web site:

http://www.european-patent-office.org/dg3/updates/1999_12_20.htm

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: 
http://www.fedcir.gov/





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