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 reproducable in 1930 when the statute took effect.
However, nothing in the Plant Patent Act of 1930 indicates that Congress was trying to lesson the potential protection afforded under § 101. Congress was simply trying to extend protection to asexually reproduced plants which up to that time had not been recognized as protectable subject matter under § 101. The Court rejects the appellant's argument of a negative inference relating to Congress' creating of the Plant Patent Act to deny protection under sect; 101.
The Court also reconciles the passage of the Plant Variety Protection Act in 1970 by holding that the act does not expressly exclude sexually reproduced plant from protection under § 101 and that protection under § 101 is broader and more difficult to obtain. Under the PVPA, protected varieties can be used to produce hybrids, whereas under § 101, they cannot. The exemptions under the PVPA would, therefore, make the appellant's activity non-infringing.
Similar to the Plant Patent Act of 1930, the PVPA was intended to extend intellectual property coverage to sexually reproduced plant varieties. The prevailing thought at the time was that sexually reproduced plant varieties were not protectable subject matter under § 101. Subsequent decisions, including the aforementioned Chakrabarty, have broadened/clarified the scope of § 101, and the language of the PVPA does not indicate that Congress intended the PVPA to limit any potential application of § 101. Furthermore, there is no irreconcilable conflict between § 101 and the PVPA.
The Court concluded its analysis by pointing out that Congress had 16 years from In Re Hibbard until this case to limit the protection of plant with utility patents and has declined to do so. In addition, in an amendment to § 119, Congress recognizes utility patents for plants.