Chapter §24.02 Historical Development

• Jurisdiction: United States

§24.02 Historical Development

[A] Plant Patent Act of 1930

The plant patent provisions of U.S. patent law were first enacted in 1930,⁵ but today are codified at Part I, Chapter 15 of the Patent Act (encompassing 35 U.S.C. §§161–164).⁶ Why does the Patent Act make separate provision for plant patents? The answer is primarily historical. Prior to Congress's 1930 passage of the Plant Patent Act, plants were not seen as fitting into the existing statutory scheme for patents. The general consensus at that time was that plants could not qualify for patent protection because even those plants bred by humans were believed to be "products of nature."⁷ Moreover, because new plants might only differ in color or perfume, they were thought not amenable to the written description of the invention requirement as set forth in the statutory predecessor of what is today 35 U.S.C. §112(a).⁸

Economic considerations overcame these concerns about extending patent protection to plants. When free, government-sponsored seed distribution programs for farmers ended in 1924, scant seed-based innovation and few markets for seeds existed.⁹ In contrast, nurseries had successfully commercialized the sale of asexually reproduced fruit trees and flowers¹⁰ but had no intellectual property protection to stop copying of their new varieties.¹¹ Proponents launched a campaign focused primarily on protecting the innovations of nurseries and plant breeders. Prominent inventors such as Thomas Edison¹² and plant breeders such as Luther Burbank¹³ encouraged Congress to provide patent protection for plants as a means of encouraging greater innovation in plant breeding.¹⁴

Responding to these concerns, Congress in 1930 enacted the Townsend-Purnell Plant Patent Act.¹⁵ Congress's action represented an acceptance of the modern view that asexually reproduced, distinct, and new plant varieties are not unprotectable "products of nature" but rather exist only through the intervention of humans. Moreover, passage of the Plant Patent Act demonstrated Congress's intent to stimulate innovation in plant breeding. The Act's legislative history provided that

[t]he purpose of the bill is to afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system as has been given to industry, and thus assist in placing agriculture on a basis of economic equality with industry. The bill will remove the existing discrimination between plant developers and industrial inventors. . . . ¹⁶

In enacting the Plant Patent Act of 1930, Congress incorporated the plant patent provisions into existing statutory sections that already provided for utility patents.¹⁷ With promulgation of the 1952 Patent Act, however, the plant patent provisions were divided out to create a separate Chapter 15 of Part I of Title 35, encompassing sections 161 to 164.¹⁸ The separation of plant patents into their own chapter of the Patent Act was nothing but a "housekeeping measure."¹⁹

[B] 1954 Amendments

Following its 1952 codification in Title 35 of the United States Code, §161 (the primary plant patent provision) was amended in 1954. Congress acted to explicitly preclude patent protection for plants found in an uncultivated state. It "thereby broaden[ed] the statute to include plants found in a cultivated state and subsequently asexually reproduced."²⁰

More specifically, §161 was amended in 1954 as follows:

§161. Patents for plants

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 propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. ²¹

The Federal Circuit has explained that the 1954 amendments merely extended patent protection to "newly found seedlings" but did not "otherwise alter the scope of plant patent protection for other plant categories."²² The legislative history of the 1954 amendments indicates that they were intended to legislatively overrule a 1951 Patent Office Board of Appeals decision that had rejected a plant patent claim to a seedling discovered by a professional plant breeder in a cultivated garden.²³ By effectively overruling that decision, Congress clarified that newly found seedlings did not have to have been created by the plant breeder so long as the plant patent applicant thereafter had discovered the seedling on cultivated land.

Congress's "apparent assumption . . . was that an exception was warranted for newly found seedlings because, the plant having been a seedling at the time of its discovery, it could be assumed that it was cultivated in its inception and that the cultivation of the land by man contributed to its creation."²⁴ By the 1954 amendments, Congress thus extended plant patent protection to include "newly found seedlings," "but only if they were somehow the result of human activity (i.e., the cultivation of the land on which they originated), and not the chance find of a plant explorer in the wild."²⁵

[C] Plant Variety Protection Act of 1970

As explained supra,²⁶ the Plant Patent Act of 1930 (as amended in 1954 and codified in sections 161 to 164 of the Patent Act (35 U.S.C.)) is limited to protection of new and distinct plant varieties that have been asexually reproduced (such as by cutting, budding, or grafting). This ensures that the asexually reproduced plant is a genetic clone of its parent plant. The 1930 Act does not provide plant patent protection for plants grown from seed, that is, via sexual reproduction.

In 1970, Congress enacted the Plant Variety Protection Act (PVPA) to provide intellectual property (IP) protection for plants developed from seeds.²⁷ Congress's stated purpose was to "encourage the development of novel varieties of sexually reproduced plants and to make them available to the public, providing protection available to those who breed, develop, or discover them, and thereby promoting progress in agriculture in the public interest."²⁸

This sui generis IP framework, which is not part of the Patent Act, provides "limited patent-like protection for certain sexually reproduced plants."²⁹ The PVPA is administered not by the USPTO but rather the U.S. Department of Agriculture. Accordingly, the PVPA is codified in Title 7 ("Agriculture"), Chapter 57 ("Plant Variety Protection") of the United States Code.³⁰

The PVPA authorizes the Department of...