Pioneer Hi-Bred International ("Pioneer") is the owner of several United States patents directed to plants and seeds for new varieties of hybrid and inbred corn. Pioneer sued J.E.M. Ag Supply ("J.E.M.") for infringement of the plant and seed patents. J.E.M. now appeals the ruling of the District Court of the Northern District of Iowa, denying J.E.M.'s motion for summary judgment and holding that sexually reproduced plants are patentable under 35 U.S.C. § 101.
35 U.S.C. § 101, which defined patentable subject matter, has been interpreted expansively by the Supreme Court to include all inventive works of mankind. See Diamond v. Chakrabarty, 447 U.S. 303 (1980). J.E.M. argued that Pioneer's plant patents were invalid because this expansive reading of § 101 did not apply to seeds and seed grown plants. J.E.M. contended that seeds and seed grown plants were excluded from protection under 35 U.S.C. § 101 because Congress intended to protect seeds and seed grown plants under the Plant Variety Protection Act (P.V.P.A). J.E.M. based this argument on the rule of statutory construction that a general statute must yield to a specific statute.
Plant varieties were originally excluded from patentable subject matter because, as "products of nature", they did not meet the requirement of new, non-obvious subject matter, and because they could not be described with enough specificity to meet the patent statute written description requirement. With advancements in science that enable mankind to genetically modify plants, however, the Patent and Trademark Office (PTO) has issued patents for plants and other living organisms that meet the new and non-obvious statutory requirements. The PTO established new rules for adequately describing plant matter. The description requirement allows inventors to submit a color photo with a description of the plant's origin or parentage and with a detailed discussion of its distinguishing features.
The Federal Circuit held that the P.V.P.A. did not purport to exclude new plant varieties from plant protection under the patent statues. 35 U.S.C. and the P.V.P.A. merely differ in the rights and obligations imposed by the two statutes, but both govern patentability of plants. Where two statutes are not in conflict, they should be read in harmony. Therefore, protection of seed grown plants under P.V.P.A. does not exclude them from patentable subject matter under 35 U.S.C. § 101. The Federal Circuit affirmed the District Court's denial of summary judgment to defendant J.E.M.
Prepared by the liibulletin-patent Editorial Board.