Plants are only patentable if their purported inventor actively works to breed a new variety of plant. Simply finding a new variety of plant in nature and later cultivating it is not enough, the Federal Circuit said in a precedential opinion (PDF) on 6 August 2012.
The appellate court rejected a pair of appeals lodged by Walter F. Beineke, who sought to overturn a determination by the review board of the U.S. Patent and Trademark Office (USPTO) that two types of oak tree he had discovered were not patentable. The Federal Circuit said that both the 1930 Plant Patent Act and its later amendments prevented Beineke from applying for patent protection on his oak tree varieties.
“The provisions of the original 1930 Act, incorporated in the present plant patent statute, provided patent protection to only those plants … that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor, that is, the one applying for the patent,” the Federal Circuit said. “Beineke meets neither of these requirements.”
“Beineke does not argue that the oak trees were in any way the result of his creative efforts or indeed anyone’s creative efforts, and thus they do not fall within the scope of those plants protected by the 1930 Act,” the appellate court said.
In 1980, Beineke discovered a pair of white oak trees that he observed “[displayed] superior genetic traits as compared to other white oak trees, such as excellent timber quality and strong central tendency,” as described in Monday’s ruling.
Following his discovery, Beineke planted acorns gathered from each of the century-old trees, and, observing these same favorable traits in the saplings, asexually reproduced the trees, again confirming their genetic superiority. He subsequently applied for patent protection for both varieties of oak trees.
A patent examiner rejected Beineke’s applications, finding that the trees were found in an “uncultivated” or natural state, and ruled that they were unpatentable. Beineke appealed the decision to the USPTO’s Board of Patent Appeals and Interferences (BPAI), which twice upheld the examiner’s decision, in rulings in 2008 and 2011.
“The evidence of record shows that the claimed oak tree[s] [were] found in an uncultivated state and [were] therefore unpatentable,” the board said in its more recent ruling. Beineke appealed both of the board’s opinions to the Federal Circuit.
The Federal Circuit opinion (PDF) affirmed the rejection. The Federal Circuit disagreed with Beineke’s position that patent law allows an inventor to have played a minimal role, that merely finding, cultivating, recognizing and asexually reproducing a new variety of plant was good enough to allow for patent protection.
“Although not explicitly stated in the [Plant Patent Act], Congress was clear that only ‘cultivated sports, mutants, and hybrids [were] included in the bill,’” the Federal Circuit said. “This reference to cultivation reemphasized Congress’s understanding that patent protection was available only for plants resulting from human creative efforts by the patent applicant, and not for found plants.”
“The 1930 Act was not meant to include plants discovered by chance by plant explorers and the like,” the Federal Circuit said. The appeals court additionally concluded that a series of amendments to the original Plant Patent Act enacted in 1954 that loosened the relevant patentability requirements could not avail Beineke, saying that these amendments only extended patentability to “newly found seedlings.”
“Because Beineke concedes that the oak trees are not newly found seedlings … they are not eligible for patent protection,” the court said.