Bridges Trade BioResVolume 1Number 2 • 6th December 2001

US Supreme Court Decision On Plant Patent Possible In Early 2002


US Supreme Court Decision On Plant Patent Possible In Early 2002

Since 1985, more than 1,800 patents issued in the US include claims to plants, seeds, or plant parts or tissues, of which 1,300 explicitly claim a plant seed. It would appear then that patent claims directed to sexually reproduced plants are here to stay. Or are they?

A patent infringement case involving Pioneer Hi-Bred, a subsidiary of DuPont, which is the world’s largest producer of seed corn, has re- opened the question of whether seeds and plants are patentable in the US.

In 1998, Pioneer sued a company called J.E.M. Ag Supply in a district court for selling bags of corn seeds. Pioneer claimed to hold patents on these seeds and argued that J.E.M. was infringing its patents by selling them without authorization and in contravention of Pioneer’s licensing agreements covering patented seed that forbade resale.

J.E.M. responded by arguing not only that the patents were invalid, but that Congress had never intended the scope of patentable subject matter to be extended to seeds and plant varieties. The basis of J.E.M.’s argument was that when Congress passed the 1970 Plant Variety Protection Act (PVPA), its intention was that IPR protection of seeds and sexually reproduced plants should be exclusively covered by that law.

The district court denied J.E.M.’s counter-claim, a decision which was upheld the following year by the Court of Appeals to the Federal Circuit, which agreed that Congress’s enactment of a plant variety protection law did not indicate its intention to exclude sexually reproduced plants from the patent system.

The matter would have ended there if the lawyers representing J.E.M. had not requested the Supreme Court to determine whether patents on plant varieties are invalid because of the existence of two laws: the PVPA, which covers sexually reproduced varieties; and the 1930 Plant Patent Act, which despite its name is different from conventional utility patents, for asexually reproduced varieties.

In October 2001, the Supreme Court heard the arguments of lawyers representing Pioneer and J.E.M., and the US Solicitor-General, who took a position supporting Pioneer. Some of the judges were reportedly sympathetic to the views of the J.E.M. representative, suggesting that the outcome is by no means certain.

The Supreme Court has not indicated when its decision will be published, but it could well be in the early part of 2002.

Additional Resources

“US mulls over plant utility patents,” Information Systems of Biotechnology News Report, December 2001; Court of Appeals for the Federal Circuit - Decision Docket No. 99-1035; Amicus Briefs from Office of the Solicitor General (http://www.usdoj.gov/osg/briefs/2000/2pet/6invit/1999- 1996.pet.ami.inv.pdf, http://www.usdoj.gov/osg/briefs/2000/3mer/1ami/1999-1996.mer.ami.pdf); US Supreme Court.