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HOUSE PASSES PLANT PATENT BILL TO EXTEND PROTECTION TO PLANT PARTS
Thursday, October 15, 1998
The House of Representatives on Oct. 9 passed legislation (H.R. 1197) to extend plant patent coverage to plant parts as well as the plant itself. The non-controversial measure is a simple technical clarification to a loophole in the law that has been exploited by importers of cut flowers, fruit crops, timber crops, and other propagated plants.
Current law permits foreign competitors to asexually reproduce and propagate plants that hold U.S. patents, Rep. Sam Farr (D-Calif) explained in floor remarks. It was Congress's original intent in providing for plant patents that it should be illegal to sell the fruit, flowers, and other products derived from a patented plant reproduced without authorization, he pointed out. The bill has the broad support of the plant growing industry as well as the intellectual property bar, he added.
Farr also pointed out that this problem is exacerbated by the Andean Trade Preference Act, which provides duty-free access to the U.S. market for flower exporters in Columbia, Bolivia, Ecuador, and Peru. This preferential treatment was intended to encourage Andean countries to develop legal alternatives to drug crop cultivation and production. The result has been to give them an unnecessary edge in the market to the detriment of domestic flower growers.
Closing the Loophole
Under Section 161 of the Patent Act, patents are available to anyone who "invents or discovers and asexually reproduces any distinct new variety of plant, including cultivated spores, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state[.]" Similarly, the Plant Variety Protection Act at Title 7 grants 18 years of patent-like protection to novel varieties of sexually reproduced plants.
Under 1994 amendments to the PVPA, that protection was extended to first generation hybrids and harvested parts of those plants. See PL 103-349, (48 PTCJ 649, 10/13/94). However, the Patent Act provides no such explicit protection for asexually reproduced plants. Instead, Section 163 of provides that "the grant shall be of the right to exclude others from asexually reproducing the plant or using the plant so reproduced.' The Patent and Trademark Office recognized that this provision permits growers to reproduce and use, outside the United States, plants subject to a U.S. plant patent, and subsequently import products harvested from such plants, to the detriment of the U.S. plant patent owner.
The amended Section 163 would read as follows:
In the case of a plant patent, the grant shall include the right to exclude others from asexually
reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States.
The plant patent amendment was included in a counterpart Senate bill (S. 1072) and in the now-abandoned omnibus patent reform bill (S. 507).
Patent, Trademark & Copyright Journal Volume 56 Number 1396 Copyright © 1998 by The Bureau of National Affairs, Inc., Washington D.C.