PATENTABLE SUBJECT MATTER

Plants

J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001) deals with which section of the patent code offers patent protection to plants, specifically hybrids.

Chapter 15 of Title 35 of the US Code deals with plant patents. The J.E.M. case held that even though there is a separate chapter for plant patents, they may also be patented under the usual Section 101. Importantly, Chapter 15 is very strict in that it limits protection to asexually reproduced plants. Conversely, Chapter 15 is lenient in that the disclosure requirement in the patent specification is much less restrictive.

"Hybrid seeds are produced by crossing two inbred corn plants and are especially valuable because they produce strong and vibrant hybrid plants with selected highly desirable characteristics. For instance, Pioneer's hybrid corn plant 3394 is “characterized by superior yield for maturity, excellent seedling vigor, very good roots and stalks, and exceptional stay green.” U.S. Patent No. 5,491,295, cols. 2-3, id., at 29-30. Hybrid plants, however, generally do not reproduce true-to-type, i.e., seeds produced by a hybrid plant do not reliably yield plants with the same hybrid characteristics. Thus, a farmer who wishes to continue growing hybrid plants generally needs to buy more hybrid seed."

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, may obtain a patent therefor, subject to the conditions and requirements of this title.”

As this Court recognized over 20 years ago in Chakrabarty, 447 U.S., at 308, 100 S.Ct. 2204, the language of § 101 is extremely broad. “In choosing such expansive terms as ‘manufacture’ and ‘composition of matter,’ modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Ibid. This Court thus concluded in Chakrabarty that living things were patentable under § 101, and held that a manmade micro-organism fell within the scope of the statute. As Congress recognized, “the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions.” Id., at 313, 100 S.Ct. 2204.

In Chakrabarty, the Court also rejected the argument that Congress must expressly authorize protection for new patentable subject matter:

“It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally true that once Congress has spoken it is ‘the province and duty of the judicial department to say what the law is.’ Marbury v. Madison, 1 Cranch 137, 177 [2 L.Ed. 60] (1803). Congress has performed its constitutional role in defining patentable subject matter in § 101; we perform ours in construing the language Congress has employed.... The subject-matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting ‘the Progress of Science and the useful Arts' with all that means for the social and economic benefits envisioned by Jefferson.” Id., at 315, 100 S.Ct. 2204.

Thus, in approaching the question presented by this case, we are mindful that this Court has already spoken clearly concerning the broad scope and applicability of § 101.[2]

Several years after Chakrabarty, the PTO Board of Patent Appeals and Interferences held that plants were within the understood meaning of “manufacture” or “composition of matter” and therefore were within the subject matter of § 101. In re Hibberd, 227 USPQ 443, 444, 1985 WL 71986 (1985). It has been the unbroken practice of the PTO since that time to confer utility patents for plants. To obtain utility patent protection, a plant breeder must show that the plant he has developed is new, useful, and non-obvious. 35 U.S.C. §§ 101-103 (1994 ed. and Supp. V). In addition, the plant must meet the specifications of § 112, which require a written description of the plant and a deposit of seed that is publicly accessible. See 37 CFR §§ 1.801-1.809 (2001).

Petitioners do not allege that Pioneer's patents are invalid for failure to meet the requirements for a utility patent. Nor do they dispute that plants otherwise fall within the terms of § 101's broad language that includes “manufacture” or “composition of matter.” Rather, petitioners argue that the PPA and the PVPA provide the exclusive means of protecting new varieties of plants, and so awarding utility patents for plants upsets the scheme contemplated by Congress. Brief for Petitioners 11. We disagree. Considering the two plant specific statutes in turn, we find that neither forecloses utility patent coverage for plants.