U.S. court rules crop seeds patentable

The U.S. Supreme Court has affirmed an earlier decision by a U.S. court of appeals that said a plant developer is entitled to a 20-year patent on his seed.

Justices voted 6-2 in favor of Pioneer Hi-Bred International in the case which pitted the seed company against J.E.M. Ag Supply, an Iowa farm supply company known as Farm Advantage. The Supreme Court justices ruled that seeds and sexually reproduced plants grown from seed are patentable.

The case, argued before the Supreme Court Oct. 3, 2001, revolved around a claim of patent infringement by Pioneer and a patent invalidity claim by J.E.M. Ag Supply, Inc.

According to court records, J.E.M. Ag Supply, Inc., bought and resold patented corn seed from Pioneer without its permission. The farm supply company argued that it did nothing wrong because it believes that sexually reproducing plants are not patentable subject matter under patent law. The company maintained that the Plant Patent Act of 1930 (PPA) and the Plant Variety Protection Act (PVPA) set forth the exclusive statutory means for protecting plant life.

However, Pioneer argued that the differences in the requirements for, and coverage of, utility patents and PVPA plant variety certificates do not conflict with each other. The reason, the company says, is because the requirements for a utility patent are more stringent than those for a PVP certificate, and the protections provided by a utility patent are greater than those afforded by a PVP certificate.

A federal district court, a court of appeals for the federal court, and now the U.S. Supreme Court all sided with Pioneer in their decisions.

Justice Clarence Thomas, delivering the opinion of the Supreme Court, said, “The petitioners (J.E.M. Ag Supply) essentially ask us to deny utility patent protection for sexually reproduced plants because it was unforeseen in 1930 that such plants could receive protection under the law. Denying patent protection simply because such coverage was thought technologically infeasible in 1930, however, would be inconsistent with the forward-looking perspective of the utility patent statute.”

J.E.M. Ag Supply's assumption that the Plant Patent Act is limited to asexually reproduced plants would also “make no sense if Congress intended to authorize patents on plant varieties that were sexually reproduced,” he said.

“This limitation once again merely reflects the reality of plant breeding in 1930. At that time, the primary means of reproducing bred plants true-to-type was through asexual reproduction. Congress thought that sexual reproduction through seeds was not a stable way to maintain desirable bred characteristics. Thus, it is hardly surprising that plant patents would protect only asexual reproduction, since this was the most reliable type of reproduction for preserving the desirable characteristics of breeding,” Thomas said.

“Like other laws protecting intellectual property,” he said, “the plant patent provision must be understood in its proper context. Until 1924, farmers received seed from the government's extensive free seed program that distributed millions of packages of seed annually. In 1930, seed companies were not primarily concerned with varietal protection, but were still trying to successfully commodify seeds. There was no need to protect seed breeding because there were few markets for seeds. Seed companies at the time could not point to genuinely new varieties and lacked the scientific knowledge to engage in formal breeding that would increase agricultural productivity.

“There is simply no evidence, let alone the overwhelming evidence needed to establish repeal by implication, that Congress, by specifically protecting asexually reproduced plants through the PPA, intended to preclude utility patent protection for sexually reproduced plants,” Thomas wrote on behalf of the court.

In a dissenting opinion, Justices Breyer and Stevens said, “Those who write statutes seek to solve human problems. Fidelity to their aims requires us to approach an interpretive problem not as if it were a purely logical game, like a Rubik's Cube, but as an effort to divine human intent that underlies the statute. Here that effort calls not for an appeal to canons, but for an analysis of language, structure, history, and purpose. Those factors make clear that the Utility Patent Statute does not apply to plants.”

The question before the court, he said, is whether the words “manufacture” and “compositions of matter” contained in the utility patent statute cover plants that also fall within the scope of two more specific statutes, the Plant Patent Act of 1930, and the Plant Variety Protection Act (PVPA). “I believe that the words ‘manufacture’ or ‘composition of matter’ do not cover these plants. That is because Congress intended the two more specific statutes to exclude patent protection under the Utility Patent Statute for the plants to which the more specific Acts directly refer.”

Breyer said, “The critical question is whether the two specific plant statutes embody a legislative intent to deny coverage under the Utility Patent Statute to those plants to which the specific plant statutes refer. In my view, the first of these statutes, the PPA, reveals precisely that intent.”

As initially enacted in 1930, Breyer said, the PPA said that an inventor can obtain a patent on any plant that meets three requirements. It must be distinct; it must be new; and on one or more occasions it must have been ‘asexually reproduced,’ e.g., reproduced by means of a graft.

“The PPA permits patenting of new and distinct varieties of (1) plants that breeders primarily reproduce through grafts (say, apple trees), (2) plants that breeders primarily reproduce through seeds (say, corn), and (3) plants that reproduce both ways (say, violets),” Breyer said. “But, because that statute left plant buyers free to keep, to reproduce, and to sell seeds, the statute likely proved helpful only to those in the first category. Given these characteristics, the PPA is incompatible with the claim that the Utility Patent Statute's language also covers plants.

“The 1930 Plant Patent Act had, in amending the Utility Patent Statute, placed the subject matter of the PPA — namely plants — outside the scope of the words ‘manufacture’, or ‘composition of matter.’ Nothing that occurred after 1930 changes this conclusion,” he said. “Nor does the enactment of the Plant Variety Protection Act of 1970, change the conclusion. The PVPA proved necessary because plant breeders became capable of creating new and distinct varieties of certain crops, corn for example, that were valuable only when reproduced through seeds — a form of reproduction that the earlier Act freely permitted.”

According to Breyer, the PVPA gave patent-like protection for 20 years to plants reproduced by seed, and it excluded the PPA's requirement that a breeder have “asexually reproduced” the plant. “At the same time, the PVPA created two important exceptions. The first provided that a farmer who plants his fields with a protected plant ‘shall not infringe any right hereunder’ by saving the seeds and planting them in future years. The second permitted ‘use and reproduction of a protected variety for plant breeding or other bona fide research.’ Nothing in the history, language, or purpose of the 1970 statute suggests an intent to reintroduce into the scope of the general words ‘manufacture, or composition of matter’ the subject matter that the PPA had removed, namely plants.”

Breyer said, “The Court has advanced no sound reason why Congress would want to destroy the exemptions in the PVPA that Congress created. And the Court's reading would destroy those exemptions.”

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