Chapter §24.05 Utility Patent Protection for Plants

• Jurisdiction: United States

§24.05 Utility Patent Protection for Plants

Although Congress created two specific types of intellectual property protection for plants (i.e., plant patents and Plant Variety Protection Act certificates as discussed supra¹¹⁴), the existence of these separate statutory schemes does not prevent plant-related subject matter from being claimed in utility patents. Plant-related subject matter can qualify for protection in a utility patent under 35 U.S.C. §101 if the claimed subject matter can satisfy all the rigorous requirements of utility patentability (e.g., novelty and nonobviousness).

In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc.¹¹⁵ the Supreme Court considered the validity of multiple U.S. utility patents obtained by Pioneer Hi-Bred Int'l (Pioneer) to protect the company's inbred and hybrid corn seed products.¹¹⁶ An accused infringer contended that Pioneer's utility patents were invalid because the Plant Patent Act and the Plant Variety Protection Act set forth the exclusive statutory means for the protection of plant life.

The Supreme Court disagreed, holding that neither of these plant-specific acts foreclosed utility patent protection for plants. "Whatever Congress may have believed about the state of patent law and the...