US court rules in favour of plant patenting

PLANTS PROTECTED BY PATENTS FEDERAL CIRCUIT'S RULING CLARIFIES CONFUSION IN THE LAW

By Victoria Slind-Flor The National Law Journal January 31, 2000

A recent patent decision by the U.S. Court of Appeals for the Federal Circuit involving corn seed may have far-reaching implications for feeding the hungry of the Third World, as well as for agribusiness worldwide.

The appeals court, in a ruling handed down on Jan. 19, determined that seeds, as well as the plants grown from them, are patentable under 35 U.S.C. 101. Pioneer Hi-Bred International Inc. v. J.E.M. Ag Supply Inc., No. 99-1035. Although the patent office had been granting plant and seed patents, it was not until this ruling that patentability was firmly established.

The case won attention from diverse interests. Stanford Law School Professor John H. Barton, for example, initially sought permission to file an amicus brief on behalf of New York's Rockefeller Foundation. The foundation was "concerned that a wide range of germ plasm [remain] available for developing countries," said Barton, who is a member of the National Genetic Resources Advisory Council and the National Academy Panel on Genetic Diversity.

MIRACLE RICE

Affording plants and seeds patent protection "could make it impossible to use material for breeding purposes," he said. He noted, for example, that some of the "miracle rices," developed in Asia as a weapon against hunger, have parent strains that "came from zillions of different countries." Getting licenses to continue production would be prohibitively expensive if the parent seeds were patented.

But the defendants did not want the foundation to file a brief. "They persuaded us that this would have given Pioneer a new chance to file a counter-brief, so we were persuaded not to," said Barton.

Pioneer, an agribusiness subsidiary of chemical giant E.I. du Pont de Nemours & Co., was represented by Edmund J. Sease, of Des Moines, Iowa's Zarley, McKee, Thomte, Voorheese & Sease P.L.C. Sease said that the patent dispute stemmed from the unauthorized resale of Pioneer corn seed. The resellers, represented by Bruce E. Johnson, of Des Moines' Lewis, Webster, Johnson, Van Winkle & DeVolder L.L.P., challenged the right of the patent office to issue plant patents in light of the Plant Variety Protection Act of 1970, which set up a separate mechanism to protect plant varieties.

The American Intellectual Property Law Association (AIPLA) submitted an amicus brief on behalf of Pioneer. AIPLA argued that patent protection should not be denied because an invention is embodied in a plant. Rather, AIPLA -- which was represented by Warren D. Woessner, of Minneapolis' Schwegman, Lundberg, Woessner & Kluth P.A. -- argued that in recent years, "patent protection for plants has assisted progress in many areas of agricultural science."

The appeals court, in an opinion written by Federal Circuit Judge Pauline Newman, turned to a 20-year-old U.S. Supreme Court case involving bioengineered bacteria, Diamond v. Chakrabarty, 477 U.S. 303 (1980), in which the court said that "Congress plainly contemplated that patent laws would be given wide scope."

Sease said that while he anticipates a petition for an en banc rehearing will be filed by the seed resellers, he expects the petition to be denied because all three judges on the panel -- Judge Newman, Chief Judge H. Robert Mayer and Judge Alan D. Lourie -- are considered experts on patents.

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