Talk:J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)

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Courtney

Held: Newly developed plant breeds fall within the subject matter of § 101, and neither the PPA nor the PVPA limits the scope of § 101's coverage. Pp. 597-606.

(a) In approaching the question presented here, this Court is mindful that it has already recognized that § 101's language is extremely broad and has concluded that living things are patentable under that provision, *125 Chakrabarty, supra, at 308, 313, 315, 100 S.Ct. 2204. Since 1985, the Patent and Trademark Office (PTO) has had an unbroken practice of conferring utility patents for plants. Nonetheless, petitioners argue that the PPA and the PVPA are the exclusive means of protecting new varieties of plants, and so awarding utility patents for plants upsets the scheme contemplated by Congress. Pp. 597-599.

(b) Neither the PPA's original nor its recodified text indicates that its protection for asexually reproduced plants was intended to be exclusive. The 1930 PPA amended the general patent provision to protect only the asexual reproduction of a plant. And Congress' 1952 revision, which placed plant patents into a separate chapter 15, was only a housekeeping measure that did not change the substantive rights or the relaxed requirements for such patents. Plant patents under the PPA thus continue to have very limited coverage and less stringent requirements than § 101 utility patents. Importantly, chapter 15 nowhere states that plant patents are the exclusive means of granting intellectual property protection to plants. The arguments that petitioners advance for why the PPA should preclude assigning utility patents for plants are unpersuasive because petitioners fail to take account of the forward-looking perspective of the utility patent statute and the reality of plant breeding in 1930. Pp. 599-602.

(c) That the PVPA specifically authorizes limited patent-like protection for certain sexually reproduced plants does not evidence Congress' intent to deny broader § 101 utility patent protection for such plants. While the PVPA creates a comprehensive statutory scheme with respect to its particular protections and subject matter, giving limited protection to plant varieties that are new, distinct, uniform, and stable, nowhere does it restrict the scope of patentable subject matter under § 101.

(d) The PTO has assigned utility patents for plants for at least 16 years, and there has been no indication from either Congress or agencies with expertise that such coverage is inconsistent with the PVPA or the PPA. Congress has not only failed to pass legislation indicating that it disagrees with the PTO's interpretation of § 101; it has even recognized the availability of utility patents for plants. Pp. 605-606.

The question before us is whether utility patents may be issued for plants pursuant to 35 U.S.C. § 101 (1994 ed.). The text of § 101 provides:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, **598 may obtain a patent therefor, subject to the conditions and requirements of this title.” Plants were first explicitly brought within the scope of patent protection in 1930 when the PPA included “plants” among the useful things subject to patents. Thus the 1930 PPA amended the general utility patent provision, Rev. Stat. § 4886, to provide:

In 1952, Congress revised the patent statute and placed the plant patents into a separate chapter 15 of Title 35 entitled, “Patents for plants.” 35 U.S.C. §§ 161-164.FN4 This was merely a housekeeping measure that did nothing to change the substantive rights or requirements for a plant patent. A “plant patent” FN5 continued to provide only the exclusive right to asexually reproduce a protected plant, § 163, and the description requirement remained relaxed, § 162.FN6 Plant patents under the PPA thus have very limited coverage and less stringent requirements than § 101 utility patents.

By passing the PVPA in 1970, Congress specifically authorized limited patent-like protection for certain sexually reproduced plants. Petitioners therefore argue that this legislation evidences Congress' intent to deny broader § 101 utility patent protection for such plants. Petitioners' argument, however, is unavailing for two reasons. First, nowhere does the PVPA purport to provide the exclusive statutory means of protecting sexually reproduced plants. Second, the PVPA and § 101 can easily be reconciled. Because it is harder to qualify for a utility patent than for a Plant Variety Protection (PVP) certificate, it only makes sense that utility patents would confer a greater scope of protection.

It is much more difficult to obtain a utility patent for a plant than to obtain a PVP certificate because a utility patentable plant must be new, useful, and nonobvious, 35 U.S.C. §§ 101-103. In addition, to obtain a utility patent, a breeder must describe the plant with sufficient specificity to enable others to “make and use” the invention after the patent term expires. § 112. The disclosure required by the Patent Act is “the quid pro quo of the right to exclude.” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484, 94 S.Ct. 1879, 40 L.Ed.2d 315 (1974). The description requirement for plants includes a deposit of biological material, for example, seeds, and mandates that such material be accessible to the public. See 37 CFR §§ 1.801-1.809 (2001); see also App. 39 (seed deposits for U.S. Patent No. 5,491,295).

By contrast, a plant variety may receive a PVP certificate without a showing of usefulness or nonobviousness. See 7 U.S.C. § 2402(a) (requiring that the variety be only new, distinct, uniform, and stable). Nor does the PVPA require a description and disclosure as extensive as those required under § 101. The PVPA requires a “description of the variety*143 setting forth its distinctiveness, uniformity and stability and a description of the genealogy and breeding procedure, when known.” 7 U.S.C. § 2422(2). It also requires a deposit of seed in a public depository, § 2422(4), but neither the statute nor the applicable regulation mandates that such material be accessible to the general public during the term of the PVP certificate. See 7 CFR § 97.6 (2001).