Patent Watch: In re Beineke

Alerts / August 13, 2012

[The Plant Patent Act] was not meant to include plants discovered by chance by plant explorers and the like [but provides] patent protection to only those plants (e.g., sports, mutants, and hybrids) that were created as a result of plant breeding or other agricultural and horticultural efforts [by the one] applying for the patent.

On August 6, 2012, in In re Beineke, the U.S. Court of Appeals for the Federal Circuit (Dyk,* Schall, Reyna) affirmed the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection under 35 U.S.C. § 161 of U.S. plant patent applications Serial No. 10/919,574 and No. 10/919,902, which related to white oak trees with excellent timber quality and strong central stem tendency. The Federal Circuit stated:

[35 U.S.C. § 161] permits plant patents to be granted to anyone who "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." [A]n applicant for a patent under section 161 must establish that the inventor has "recognized [the plant's] uniqueness and difference," and has "take[n] the step of asexual reproduction." The parties do not dispute these requirements. But in other respects, the parties offer quite different interpretations of the statute. Beineke argues that section 161 does not require that the alleged inventor (or other human) have played any role in the creation of the plant, and that finding a new variety of mature plant qualifies the plant for patent protection, assuming post-find cultivation, recognition, and asexual reproduction. The PTO, on the other hand, contends that no plant is patentable unless human activity played a role in the creation of the plant; in the PTO's view, the statute protects only the work of plant breeders who create new varieties of plants either intentionally or by accident. [W]e conclude that neither party is entirely correct, though the PTO's reading of the statute is closer to the correct reading. We consider first whether the trees are patentable under the language of the original 1930 Plant Patent Act ("1930 Act"), incorporated in the present statute, and second whether they are patentable under the 1954 additions to the plant patent statutes, which have been carried forward in the present statute. [U]nder the 1930 Act, in addition to post-find cultivation, recognition, and asexual reproduction, two things were necessary for an applicant to obtain plant patent protection: (1) the plant must have been created in its inception by human activity, i.e., it must be the result of plant breeding or other agricultural or horticultural efforts; and (2) the plant must have been created by the "inventor," i.e., the person seeking the patent must have contributed to the creation of the plant in addition to having appreciated its uniqueness and asexually reproduced it. Beineke has not demonstrated that he fulfills either of these requirements.

Congress in 1930 sought to change the existing rule that no plants could be patented while preserving the rule that plants found in nature were not patentable. Plants created by plant breeders were viewed as an "exercise of the inventive faculty" and thus deserving of patent protection. In making this change to protect plant breeders, the 1930 Act also incorporated another fundamental tenant of patent law: that only the "inventor" could secure a patent application based on his own inventive efforts. All early patent statutes reflected the fact that a patent was only available to the true inventor. [T]he 1930 Act was not meant to include plants discovered by chance by plant explorers and the like. [T]he provisions of the original 1930 Act, incorporated in the present plant patent statute, provided patent protection to only those plants (e.g., sports, mutants, and hybrids) that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor, that is, the one applying for the patent. Beineke meets neither of these requirements. Beineke does not argue that the oak trees were in any way the result of his creative efforts or indeed anyone's creative efforts, and thus they do not fall within the scope of those plants protected by the 1930 Act.

Neither is Beineke able to demonstrate that the oak trees are eligible for patent protection under the provisions added by the 1954 amendments to the plant patent statutes. Beineke contends that section 161 covers the mature oak trees because Beineke "found" them and they were being cultivated by the owner of the property at the time they were found. But the 1954 amendments only extended patent protection to "newly found seedlings" and did not otherwise alter the scope of plant patent protection for other plant categories. Because Beineke concedes that the oak trees are not newly found seedlings under section 161, they are not eligible for patent protection. . . . Because Beineke does not meet the other requirements of section 161 either as originally enacted or as amended in 1954, we need not reach the question of what is meant by "found in an uncultivated state" -- that is, we need not determine what level of human cultivation of the area in which a seedling was found at its inception is necessary to satisfy the statute. The Board correctly determined that the mature oak trees found by Beineke in the front yard of a home were not entitled to plant patent protection under section 161.

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung (lsung@bakerlaw.com or 202.861.1537) or any member of our Intellectual Property Team.

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