J.E.M. Ag Supply, et al. v. Pioneer Hi-Bred International, Inc. (12/10/2001)

By: Lauren R. Dunn, Medill News Service

Questions presented

Are patents issued under 35 U.S.C. @ 101 granting the right to exclude others from sexually reproducing plants or plant varieties, or from selling or using plants or plant varieties reproduced by means of sexual reproduction (by seed), invalid because the Plant Variety Protection Act and Plant Patent Act are the exclusive means of obtaining a federal statutory right to exclude others from reproducing, selling, or using plants or plant varieties?

Brief

With the amount of genetically engineered food on our supermarket shelves gradually increasing each year, patent suits are on the rise, making their way to courts across the United States.

In the case of Pioneer Hi-Bred International, Inc., a distributor of genetically engineered food products, plant patent laws are coming into question.

Pioneer, which is the owner of 17 U.S. patents on plants and seeds for new varieties of hybrid and inbred corn, is suing J.E.M. Ag Supply, Inc. for infringement. Pioneer sells its products under a limited license, which prohibits resale.

According to J.E.M.'s attorney, Bruce Johnson, the company resold 1,300 bags of seeds to friends and family.

""They were in Pioneer bags,"" Johnson said. ""No one ever touched them.""

In response to the suit, J.E.M filed a counterclaim, contending that all of Pioneer's patents are invalid under the Plant Variety Protection Act.

PVPA, enacted in 1970, states that plants cannot be patented because they are ""products of nature,"" not meeting the requirement of new, non-obvious subject matter. The statute states that the plant's breeder is entitled to protection if the plant is ""new, distinct, uniform and stable.""

Despite the statute, with new advancements in genetic engineering, the Patent and Trademark Office has issued patents for plants and other living organisms and has even created new requirements to establish patent protection. This new requirement allows inventors to submit a color photo with a description of the plant's origin, as well as a detailed discussion of its distinguishing features.

A federal judge in Iowa ruled on summary judgment that the case could go forward, finding that seeds and plants grown from seed are patentable.

In January 2000, a unanimous Federal Circuit Court of Appeals panel affirmed, holding that it is possible to obtain patent protection for a plant in the United States. The court ruled that seeds and plants that are sexually reproduced are patentable.

According to the Federal Circuit's decision, ""Although there remain the traditional categories that have never been viewed as patentable subject matter, laws of nature, viz., natural phenomena, and abstract ideas, the policy underlying the patent system fosters its application to all areas of technology-based commerce.""

""It's just a statutory question,"" Johnson said.

On Feb. 20, 2001, the U.S. Supreme Court granted certiorari in the case, with Justice Sandra Day O'Connor taking no part in the consideration or decision on the petition.

On Dec. 10, 2001, the Court held 6-2 that newly developed plant breeds are patentable.