Planting a standard: proposing a broad reading of In re Elsner.

• Author: Frostick, Alicia L.

INTRODUCTION I. CONGRESSIONAL ACTIONS A. Historical Roots B. The Plant Patent Act and Subsequent Amendments 1. The Enablement Problem 2. The Novelty Problem 3. The Necessary Implication C. The Plant Variety Protection Act II. JUDICIAL ACTIONS A. Prior Interpretations of the Patent Act Are Flexible 1. Printed Publication Interpretation 2. Single Prior Art Reference Rule B. Nondiscrimination Is a Paramount Concern: In re LeGrice C. Plants Are Not Especially Unique: In re Argoudelis III. INTERNATIONAL LAW A. Harmonization Occurs in Response to Information Accessibility B. WIPO Is Uniquely Situated to Make Good Decisions CONCLUSION INTRODUCTION

In re Elsner (1) grew out of the rejection of the plant patent applications of Mr. Elsner and Mr. Zary. Mr. Eisner is a plant breeder who resides in Germany and who maintains and "invents" new geraniums. (2) In 1997 he filed an application for a Plant Breeder's Rights ("PBR") certificate (3) at the European Community Plant Variety Office that was subsequently published. (4) The application was for a new type of geranium that originated as a mutation of a parent geranium named Pendec. (5) The published application disclosed the names and addresses of the plant breeder, a statement of botanical classification, and a provisional denomination for the plant. In 1998, Mr. Elsner sold the geranium in Germany. (6) Meanwhile, Mr. Zary filed a PBR certificate in South Africa that claimed a new variety of rose plant called the JACopper. (7) Information about the JACopper included a published certificate that specified how to contact the JACopper breeder and his South African agent. (8) Mr. Zary sold the JACopper in South Africa and Zambia as early as 1996. (9) Both Mr. Eisner and Mr. Zary tried to patent their plants in the United States under the Plant Patent Act (10) ("PPA") but were rejected under 35 U.S.C. [section] 102(b), the on-sale bar. (11) The patent office stated that the published PBR applications coupled with the overseas sale of the inventions sufficiently placed the public in possession of the invention to make it not novel and therefore unpatentable. (12)

Mr. Elsner and Mr. Zary appealed the rejections and the court was faced with the question of whether, for the plants of Elsner and Zary, a publication that met all of the requirements of 35 U.S.C. [section] 102 except enablement (13) might be placed in the possession of the public by a related public foreign sale of the invention. (14) The court held that the sale could be coupled with the publication in order to create a statutory bar to a U.S. patent. (15)

The lack of a consistent theory among Elsner's references, test, and explicit language makes the scope of Elsner hard to discern. For instance, the Federal Circuit first reiterated the bright-line rule that foreign sales coupled with a publication cannot be a statutory bar, (16) but then found that for plants, a foreign sale coupled with a publication serves as a statutory bar because it enables those skilled in the art to access the plant invention. (17)

Second, the court stated that it "disagree]d] with Appellants' contention that [its] holding will operate to create a printed publication bar whenever a non-enabling publication and a foreign sale are involved [because] ... 'there are inherent differences between plants and manufactured articles.'" (18) Specifically, the court distinguished the plants and utility inventions because the plants at issue require asexual reproduction to replicate. (19) But the Elsner court relies on a case involving [section] 101 patentable inventions--specifically microorganisms--which, as this Note will discuss in Section II.C, states the similar predicament between asexually reproducing plants and microorganisms.

Finally, although the court stated that it only distinguished plants because it "perceive[d] a difference between plants and statutorily distinct inventions," (20) it relied extensively on other sources that maintain that there should be no discrimination between plants and other inventionsmany For instance, the court quoted approvingly both the Court of Customs and Patent Appeals ("CCPA") in In re LeGrice (21) and the United States Patent and Trademark Office ("USPTO")--each of which came to a broad conclusion that plants and utility patents should have the same [section] 102(b) bars. (22) It also cited the CCPA, which stated that plants should be treated the same as utility inventions. (23) By broadening the references that may be considered as a bar to novelty under [section] 102, the court effectively made it harder to obtain a patent on a plant, thereby discriminating against them.

One reason Elsner may seem confusing is that it tried to balance conflicting congressional directives. On the one hand, the court considered that Congress did not want plants to be discriminated against. (24) On the other hand, the court had to consider that in the Patent Act, Congress had set categories of prior art, the combination of which is generally disfavored for determinations of patentability. (25) Finally, the court considered its gut notions of fairness: that a dirty, rotten scoundrel is printing material and selling plants abroad but still being allowed to patent them in the United States because of a technicality. Elsner balanced these concerns by precluding novelty for plants if the prior acts put the public in possession of the plant. This Note argues that these congressional commands Elsner needed to balance do not actually require different outcomes and instead indicate that courts should extend Elsner's "possession test" (26) to all utility inventions.

Some may critique reconciling the discrimination of plant patents with other utility patents by changing all of the patent laws governing utility patents to the level of the narrow category of plant patents as similar to moving a mountain to meet a stone. (27) This critique misses the point; the Elsner court recognized that in a progressive world where foreign knowledge is more available to inventors, the circumstances that determine public possession will also need to regularly change. Stated in a different way, the criteria for public possession will need to change in order to maintain a continuously strict patentability regime. Courts must constantly reconsider the Patent Act in light of continuous technology changes if they intend to maintain the constant strictness of the patent standard; (28) Eisner merely reflects this kind of reconsideration. As technology changes, courts should be adapting outdated laws to reflect the changing world.

This Note will show that one can read Eisner broadly to encompass both plant-type and widget-type inventions, and that applying Elsner to both plants and widgets is within the current statutory framework and case law. Such a reading would change the [section] 102 bar for inventions patentable under [section] 101 (29) (hereinafter referred to as "widgets") as well as for plants. Part I of this Note argues that congressional sources require a flexible test--one that does not prejudice any objects under the Patent Act. Part II discusses the judicial interpretation of the Patent Act prior to Eisner in order to argue first, that past cases disfavor discrimination based on invention type and second, that courts have already applied a broad reading of Eisner to non-plant inventions. Part III shows that the move toward harmonization of U.S. laws with international standards is especially strong in intellectual property. As a result, Part III argues that courts should pay attention to international sources and harmonize U.S. laws with international standards. Such harmonization requires considering foreign sales as prior art for all inventions. Thus, courts should apply the Eisner court's "possession test" to plants and [section] 101 inventions, effectively removing the territorial boundary for sales that make inventions accessible to the U.S. public.

1. CONGRESSIONAL ACTIONS

   This Part will argue that the language and amendments of the governing statutes, the Patent Act and the Plant Patent Act ("PPA"), support a broad reading of Elsner that expands its "possession test" to widgets. Section I.A will first discuss the historical roots of the Patent Act and conclude that the framers of the Patent Act envisioned that the novelty requirement would be based on community knowledge similar to Elsner's possession test. Section I.B will then look to the language of the Plant Patent Act and its amendments to show that the statute's goal was to treat plant inventions the same as utility inventions. It then argues that congressional acts targeted changing the status of the utility inventions rather than that of plant inventions in order to maintain such nondiscrimination. Finally, Section I.C will explore the Plant Variety Protection Act ("PVPA"), a distinct statute that Congress used to set up a separate regime for objects that require disparate treatment. Part I.C argues that since Congress did not set up a similarly distinct statutory regime for asexually reproducing plants, courts should treat these plants the same as utility inventions.

   1. Historical Roots

      Even the earliest tests for novelty have their roots in a test of public accessibility, meaning that a novelty determination should change with the varying level of community knowledge. Historic cases show that varying levels of community knowledge correspond with changes in the novelty requirement such that as information becomes more accessible to the community, the conditions for patentability change. In 1615, the King's Bench explained the need for the novelty requirement in Clothworkers of Ipswitch:

      [I]f a man hath brought in a new invention and a new trade within the kingdom, in peril of his life, and consumption of his estate or stock or if a man hath made a new discovery of any thing, in such cases the King ... in recompense of his costs and travail, may grant by charter unto...