Citation:
Kenneth E. Krosin, Are Plants Patentable under the
Utility Patent Act, 67 J. Pat. & Trademark Off. Soc'y
220, 238 (1985)o
Copyright Information
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Journal of the Patent and Trademark Office Society
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May 1985, Vol. 67, No. 5
and exact terms" as to enable one of ordinary skill in the
pertinent art to make and use the invention, and must "set
forth the best mode contemplated by the inventor of carrying
out his invention." 35 U.S.C. 112.
Under the PPA a patent may be granted to whoever
"invents or discovers and asexually reproduces any distinct
and new variety of plant, including cultivated sports, mutants,
hybrids, and newly found seedlings, other than a tuber prop-
agated plant or a plant found in an uncultivated state." 35
U.S.C. 161. Asexual reproduction covers classical vege-
tative propagation techniques such as rooting of cuttings,
layering, budding, grafting, and marching."
, The principal advantage of the PPA is that the descrip-
tion of the plant need only be "as complete as is reasonably
possible," 35 U.S.C. 162, as compared with the more strin-
gent requirements of UPA Section 112. 12 There are three
principal disadvantages to the PPA. First, the patent may
contain only one claim which must be directed solely to the
specific variety described in the specification; it is not pos-
sible to claim the plant generically or to vary the scope of
the claims as with utility patents. Second, the PPA only
grants the right to exclude others from "asexually repro-
ducing the plant or selling or using the plant so reproduced."
35 U.S.C. 163. This has been interpreted by some courts
as requiring proof that defendant derived his plant from
plaintiff's plant by asexual reproduction. 13 This places a
heavy burden on plaintiff, since he must show that defendant
misappropriated plaintiff's plant or plant cuttings. Third,
only the whole plant and not portions thereof such as seeds,
fruit, or flowers may be claimed, and the patentee may not
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May 1985, Vol. 67, No. 5
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sexually reproduced plants under the PVPA. Since there
was no comparable statute for bacteriaindeed, the PVPA
expressly excluded bacteria from its coverage," and the
PPA had been judicially interpreted to exclude bacteria"
the PTO argued that Chakrabarty's bacteria were not patent-
able subject matter under UPA Section 101.
The Supreme Court rejected this argument on two
grounds. First, it recognized that the "relevant distinction"
between patentable and non-patentable subject matter "was
not between living and inanimate things, but between prod-
ucts of nature, whether living or not, and human-made
inventions." 447 U.S. at 313. Since Chakrabarty had "pro-
duced a new bacterium with markedly different character-
istics from any found in nature and one having the potential
for significant utility," id. at 310, it satisfied this basic
requirement.
Second, and more directly pertinent to the present dis-
cussion, the Court explained that Congress had not enacted
the PPA and PVPA because it believed that statutory autho-
rization was needed to patent living things, but because there
were two perceived impediments to patenting plants under
the UPA: (1) plants, even those artificially bred, had been
held to be simply products of nature,16 and (2) plants, which
might differ from each other only in color or perfume, could
not be described adequately under the "written description"
requirement of UPA Section 112.
Neither of these impediments provides a basis for con-
cluding that plants are non-patentable subject matter under
the UPA. The first impediment has no current viability with
respect to human-modified plants because it runs directly
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May 1985, Vol. 67, No. 5
contrary to the Supreme Court's broad proclamation in
Chakrabarty that patentable subject matter under the UPA
encompasses "anything under the sun that is made by man."
447 U.S. at 309. Indeed, it is noteworthy that at the time the
PPA was enacted, Congress itself recognized that there was
no basis for this impediment with respect to plants modified
by human intervention:
[A] plant discovery resulting from cultivation is unique, isolated,
and is not repeated by nature, nor can it be reproduced by nature
unaided by man. . . .
***
It is obvious that nature originally creates plants but it can not
be denied that man often controls and directs the natural processes
and produces a desired result.
***
Furthermore, there is no apparent difference, for instance,
between the part played by the plant originator in the development
of new plants and the part played by the chemist in the develop-
ment of new compositions of matter."
As to the second impediment, the perceived inability to
describe plants with sufficient particularity to satisfy the
requirements of Section 112 has no bearing on the question
of whether plants are patentable subject matter under Sec-
tion 101. Thus, if not for the "product of nature" cases,
Congress simply could have amended Section 112 to include
the reduced disclosure requirements of PPA Section 162.
The only colorable argument that plants should not be
deemed patentable subject matter under the UPA is that the
PPA and PVPA provide the exclusive methods of protecting
asexually and sexually reproduced plants. In other words,
passage of those statutes implicitly removed plants from the
broad scope of Section 101.
The PTO recently adopted this position, as reflected in
the comments of Rene Tegtmeyer, Assistant Commissioner
for Patents, at the October 18, 1984 annual meeting of the
Industrial Biotechnology Association:
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of protection can only be resolved by resort to general prin-
ciples of statutory construction. The following three such
principles are pertinent to this question:
Principle 1: Where one statute deals with a subject in
general terms (here the UPA) and another statute deals with
the same subject in a more detailed way (here either the
PPA or PVPA), the two should be harmonized, if possible.
This principle was succinctly expressed by the Supreme
Court in Morton v. Mancari, 417 U.S. 535, 551 (1974):
The courts are not at liberty to pick and choose among congres-
sional enactments, and when two statutes are capable of co-exis-
tence, it is the duty of the courts, absent a clearly expressed
congressional intention to the contrary, to regard each as effective.
Principle 2: As a corollary to the first principle, if there
is any conflict between the general statute and the specific
statute, the latter will prevail, regardless of whether it was
passed before or after the general statute, unless it is clear
that the legislature intended to make the general statute
controlling. Preiser v. Rodriguez, 411 U.S. 475, 489 (1973);
C. Sands, Sutherland and Statutory Construction, 51.05 at
499 (4th ed. 1984).'9
Principle 3: In apparent contradiction to the first two
principles, some cases have held that a specific statute gov-
erns a general statute covering the same subject matter,
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apparently regardless of whether or not the two can be
harmonized."
While there is no clearly discernible way to distinguish
the facts of the cases applying Principle 3 from those apply-
ing Principles 1 and 2, the weight of authority in terms of
the number of decided cases and their more recent vintage'
suggests that the majority of courts have opted to apply
Principles 1 and 2. Moreover, the U.S. Court of Appeals for
the Federal Circuit, which ultimately will decide whether or
not human-modified plants are patentable subject matter,
recently acknowledged the propriety of Principle 1 in Roche
Products, lnc. v. Bolar Pharmaceutical Co., 733 F.2d 858,
864 (Fed. Cir.), cert. denied, 105 S. Ct 183 (1984). Assuming
the Federal Circuit would do the same here, the key question
is whether there would be any conflict if plants were deemed
patentable subject matter under both the UPA and the PPA
or PVPA, i.e., could these statutes be harmonized under
such circumstances?
The cases dealing with Principles 1 and 2 cover a wide
variety of factual circumstances and provide no clear cut
basis for determining when a court will apply the specific
statute to the exclusion of the general statute. Nevertheless,
one point which consistently emerges is that if the specific
and general statutes can be applied simultaneously, there is
no cognizable conflict and both statutes will apply. For
example, in the Regional Rail Reorganization Act Cases,
419 U.S. 102 (1974), the question presented was whether
plaintiff's damages were limited by the Regional Rail Reor-
ganization Act of 1973, 45 U.S.C. 701, et seq., which only
authorized funds specifically provided by Congress for use
in managing rail properties, or whether plaintiffs could recover
their full damages under the Tucker Act, 28 U.S.C. 1491,
which provided that damages could be obtained by a private
party against the government in a suit brought in the Court
of Claims. In concluding that the more specific Rail Act did
20 Ginsburg & Sons, Inc. v. Popkin, 285 U.S. 204, 208 (1932) ("specific terms
prevail over the general in the same or another statute which otherwise might be
controlling"); Fourco Glass Co. v. Transmirra Corp., 353 U.S. 222,228-29 (1957);
United States v. Aquino, 338 F.Supp. 1080 (E.D. Mich. 1972).
21 See footnote 16.
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not preclude the remedies provided by the more general
Tucker Act, the Supreme Court explained that "[Once the
Tucker Act and the Rail Act are 'capable of coexistence it
is the duty of the courts, absent a clearly expressed Congres-
sional intention to the contrary, to regard each as effec-
tive.' "22 As explained below, there are compelling reasons
for concluding that the UPA and PPA, on the one hand, and
the UPA and PVPA, on the other hand, can be applied
simultaneously to plants.
1. The Pertinent Analogy Between the Utility Patent
Act and the Design Patent Act
Although no court has addressed the question of whether
plants may be patented simultaneously under both the UPA
and PPA or PVPA, several courts have considered the anal-
ogous question of whether patents may be obtained on the
same invention under the UPA and the design patent statute
("DPA"), 35 U.S.C. 171-73.23 Pursuant to Section 171, a
design patent is issued on the "ornamental design" of an
"article of manufacture." A design patent may contain only
one claim which must be drawn to the ornamental design of
the article "as shown" or "as shown or described" in the
specification." Section 173 provides that a design patent is
granted for a term of fourteen years, as opposed to seventeen
years for a utility patent.
The validity of this analogy is demonstrated by two
facts. First, the subject matters covered by the DPA, PPA
and PVPA overlap to varying degrees with the subject matter
covered by the UPA. An overlap exists between the UPA
and DPA because the UPA protects the claimed article
22 Quoting from Morton v. Mancari, supra, 417 U.S. 535; see also Tibke v.
Immigration and Naturalization Service, 335 F.2d 42 (2d Cir. 1964).
23 The first design patent statute was enacted in 1842, ch. 263, 2, 5 stat. 543.
It was subsequently merged with the utility patent law in the Consolidated Patent
Act of 1870, ch. 230 71-76, 16 Stat. 198.
24 The single-claim requirement is not set forth in the statute but has been
imposed judicially. See In re Rubenfield, 270 F.2d 391 (C.C.P.A. 1959), cert.
denied, 362 U.S. 903 (1960). It has also been ruled that Section 103 of the UPA
"applies with equal force to a determination of the obviousness of either a design
or a utility patent." Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1441
(Fed. Cir. 1984).
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of manufacture while the DPA protects the article of man-
ufacture embodying the claimed ornamental configuration.
This overlap is perhaps best illustrated when the same fea-
ture of a device constituting the novel utilitarian aspect also
produces the unique ornamental appearance. 25 Similarly,
overlaps would exist between the UPA and PPA or PVPA
because the article itself (i.e., the human-modified plant)
would be the subject matter for which protection is sought.
It should be noted, however, that like the DPA, the subject
matters covered by the PPA and PVPA would not be totally
subsumed by the UPA." The significance of this fact is that
if plants were deemed patentable subject matter under the
UPA, the PPA and PVPA would still be needed to protect
plants outside the scope of the UPA but within the scope of
those two statutes.'
Second, the legislative history of the DPA, as with the
PPA and PVPA, says nothing about whether it was meant
to be the exclusive form of protection when such an overlap
exists.28
In a number of decisions the courts have delineated the
circumstances under which both UPA and DPA patents may
be obtained on the same or a closely related invention. The
25 See In re Thorington, 418 F.2d 528, 537 (C.C.P.A. 1969), cert. denied, 362
U.S. 903 (1960); In re Hargraves, 53 F.2d 900 (C.C.P.A. 1931) (utility patent
application claiming a novel tire tread design rejected over applicant's design patent
claiming the ornamental design of the same tire).
26 For example, there is no utility requirement under either the PPA or PVPA.
(See Yoder Bros., Inc. v. California-Florida Plan Corp., supra, 537 F.2d at 1377,
where the court observed that the requirement of distinctness under the PPA
"replaces" that of utility under the UPA.) Hence a "distinct and new" asexually
reproduced plant variety having no "utility" (defined under the UPA to mean that
the invention is capable of some beneficial use, Bedford v. Hunt, 3 F. Cas. 37 (No.
1217) (CC. Mass. 1817)) would be patentable subject matter under the PPA and a
"novel" sexually reproduced plant variety having no utility would be patentable
subject matter under the PVPA, but neither would be patentable subject matter
under UPA Section 101. As another example, "newly found seedlings" expressly
are made patentable under the PPA, but would be unpatentable subject matter
under UPA Section 101 because, unmodified in any way by the hand of man, they
would be nothing more than a "product of nature."
27 As explained below, another reason for having the PPA and PVPA co-exist
simultaneously with the UPA is to give an applicant options on the extent of
disclosure needed in a patent applicationless for a PPA or PVPA patent and
more for a UPA patent.
28 See S. Rep. No. 1139, 57th Cong., 1st Sess. (April 15, 1902).
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following points gleaned from these cases are pertinent to
the question of whether there is any conflict between the
UPA and the PPA or PVPA:
1. There is no statutory basis for precluding issuance
of both a utility patent and a design patent on the same
invention.' Instead, as explained in In re Thorington, supra,
the courts have fashioned a doctrine precluding such "double
patenting" on the same invention, based upon the theory that
a patentee should not be permitted to extend the term of his
patent "monopoly.""
2. The test used in determining whether a utility patent
and a design patent cover the "same invention," and hence
whether they may not simultaneously co-exist, is: Do the
two patents "cross read," a term defined in Wahl v. Rex-
nord, Inc., 624 F.2d 1169, 1179 (3d Cir. 1980) as follows:
To say that patents cross-read means that a device embodying the
patentable design of the design patent must infringe the utility
patent; and that a device embodying the patentable claims of the
utility patent must infringe the design patent. [Emphasis in origi-
nal]. 31
Utility-design double patenting may also be found if the
subject matter of the claims of one patent "would have been
obvious from the subject matter of the claims of the other
patent, and vice versa.""
3. In the utility-utility patent context a "terminal
disclaimer"" may not be used to overcome "same inven-
29 In contrast, there is a statutory basis for precluding issuance of two utility
patents on the same invention, namely, Section 101 of the UPA which provides
that an inventor "may obtain a patent" on his invention.
30 See In re Swett, 451 F.2d 631, 635 (C.C.P.A. 1971); Transmatic, Inc. v.
Gulton Industries, Inc., 601 F.2d 904, 909 (6th Cir. 1979); Carman Industries, Inc.
v. Wahl, 724 F.2d 932, 940 (Fed. Cir. 1983); Wahl v. Rexnord, Inc., 624 F.2d 1169
(3d Cir. 1980).
31 Accord Carman Industries, Inc. v. Wahl, 724 F.2d 932 (Fed. Cir. 1983). As
explained by Professor Chisum, "[d]ouble patenting is concerned with attempts
to claim the same or related subject matter twice. Thus, the standard for compar-
ison for the second patent is what was claimed in the first patent." D. Chisum, 3
Patents 9.03[1] (1984).
32 Carman Industries, Inc. v. Wahl, supra, 724 F.2d at 940.
33 Under 35 U.S.C. 253, a patent applicant or patentee may disclaim the terminal
portion of his patent term. By filing such a "terminal disclaimer," the applicant or
patentee concedes that both patents will terminate on the same date.
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