J.E.M. AG SUPPLY V. PIONEER HI-BRED
U.S. Supreme Court Dec. 10, 2001
By Geoff Rhodes
COLUMBIA, SC - In Pioneer Hi-Bred, the Supreme Court held that plants were protectable subject matter under 35 U.S.C. § 101. The appellant in this case contended that the Plant Variety Protection Act, 7 U.S.C. § 2321 et seq., and the Plant Patent Act of 1930, 35 U.S.C. §§ 161-164, were intended by Congress to be the sole means of protecting new plant varieties.
The language of § 101 is very broad, including any manufacture or any composition of matter, and has previously been held to include living things. Diamond v. Chakrabarty, 447 U.S. 303 (1980). The PTO Board of Patent Appeals and Interferences has further held that the language of § 101 includes plants as patentable subject matter. In re Hibberd, 227 U.S.P.Q. 443 (1985).
The Plant Patent Act of 1930 provided patent protection to asexually reproduced plants. Plant patents issued under § 161 must fit within the scope of § 101 but do not need to meet the description requirements of § 112. However, the Plant Protection Act does not expressly state that § 161 plant patents are the only means of protection for plants. Plants were, therefore, impliedly still protectable with a utility patent.
The infringing conduct in this case was the appellant's resale and reproduction of the respondent's patented hybrid seeds. In arguing that the seeds should only be protectable by a § 161 plant patent, the appellant is attempting to characterize its activity as non-infringing. Plant patents do not protect the right to sexually reproduce the seeds, because hybrid traits were not considered reproducible in 1930 when the statute took effect. (more)
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