Plants patentable subject matter

Plants. AsexuaHy reproducing plants, ie, those not propagated by means of seed, also represent a legally recognized class of patentable subject matter under U.S. patent laws. Additionally, the inventor must have discovered and asexuaHy reproduced the plant that is to be the subject of the patent apphcation. Plant patents are assigned a different series of numbers than the majority of patents discussed in the foregoing, such as U.S. Plant Patent No. 3,360 titled "Peach Tree" (7). 

Patentable subject matter in many countries (especially for health-related and biotechnology inventions) is often significantly restricted compared to practices in the United States. Some countries do not allow plants or animals to be patented. The United States, Japan, and the European Patent Office currently allow genetically engineered animals to be protected by patent (55). Many countries do not allow pharmaceuticals or methods of medical treatment to be patented. Each country will, of course, have its own specific limitations and exceptions for patentable subject matter (56). It is not possible in the present chapter to provide an even limited discussion of such patent-able subject matter. Moreover,any details provided could very well be out of date in a relatively short time. However, a few examples for selected countries (57) are helpful to illustrate the variations in patentable subject matter ... 

National patent offices act within the boundaries of the country they exist within and apply that country s patent law. Patent applicants may file applications directly with national patent offices in each country where patent protection is required. The decision of where to hie an application is generally based on the predicted potential markets for the invention. For example, a crop plant genetically modihed to be resistant to frost may only be marketable in countries with colder climates and with markets open to genetically modihed foods. Another consideration is the patentable subject matter allowed in each jurisdiction. For this product, an inventor can seek patent protection for a plant in the United States, but not Canada or Europe. The most cost-effective strategy for an invention that is only marketable in a small number of countries is to hie patent applications directly with individual national patent offices. 

Until recently, plants, as living subject matter, were not considered patentable under the general patent law. However, as already indicated, the Supreme Court in Diamond v. Chakrabarty, decided that a living genetically engineered microorganism was patentable subject matter under section 101 of title 35. 

Patents are granted only for inventions in machines, methods, manufactures, compositions of matter, designs, and asexually produced plants. An invention, to be patent-able, must be novel, useful, and unobvious. The requirement of novelty means that something new is disclosed. Novelty exists if the invention has not been described in a publication or patent anywhere in the world, or if there has been no prior public use or sale in this country. The requirement of utility means the performance of some beneficial function, though only crudely. The requirement for unobviousness means that the subject matter would not be obvious to a skilled worker, if he had available to him all prior knowledge. All three requirements are essential, and all three must coexist. 

The Supreme Court Decision in Diamond v. Chakrabarty, 477 U.S. 303, 206 USPQ 193 (1980) paved the way for patenting living microorganisms and described Section 101 of the general patent laws as encompassing a broad range of subject matter including plants. 

Living plants or other subject matter were considered not patentable uner the general patent law until recently. In accordance with the 1980 decision of the Supreme Court in Diamond v. Chakrabarty 447 U.S. 303 (1980), the general patent law does not exclude the patenting of man-made living matter. 

Since the Chakrabarty decision, the Patent and Trademark Office has adopted the interpretation of the three laws governing plants that any subject matter protectable under either the PPA or PVPA cannot be protected under the general patent law (35 U.S.C. 101). This interpretation is based on application of certain principles of statutory construction. 

For plants, until recently, higher plants - with a minor exception of Irish potatoes, Jerusalem artichokes, and first generation hybrids - were held to be unpatentable subject matter by the Patent Office. However, a recent Board of Appeals decision. Ex parte Hibberd, et al., has clearly held that they are. Probably no one is as nervous about manipulating the genetic structure of... 

A patent is in essence an agreement between the State and an inventor by which the inventor is guaranteed exclusive rights for his invention in return for making a full disclosure of its nature to the public. The subject matter of a patent may cover a machine, a process, a manufacture and (in the United States) a botanical plant. It must be both new and useful. A patent specification... 

PATENTABILITY. The qualifications for obtaining a patent on an invention of chemical process. These arc (1) the invention must not nave been published in any country or in public use in the U.S., in either case for more than 1 year before the date of filing the application (2) it must not have been known in the IJ.S. before date of invention by the applicant (3) it must not be obvious to an expert in the art (4) it must be useful for a purpose not immoral and not injurious to the public welfare (5) it must fall within the five statutory classes on which patents may be granted, i.e., (a) composition of matter, (b) process of manufacture or treatment, (c) machine, (d) design (ornamental appearance), or (e) a plant produced asexually. Special regulations relate to atomic eneigy developments and subjects directly affecting national security (Robert Calvert). Note In 1980, the Supreme Court m al landmark decision upheld the patentability of synthetic bacteria created by recombinant DNA techniques. 

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