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So you want to be An expert but you only have 10 Minutes …. There are growing opportunities available in plant patents!. Background, Neem tree = perhaps the most famous legal plant–mentioned in 134 law review articles & 33 US cases!!. 10 Minutes? A brainless LEXIS search reveals….

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So you want to be an expert but you only have 10 minutes

So you want to be An expert but you only have 10 Minutes….

There are growing opportunities available in plant patents!

Background, Neem tree = perhaps the most famous legal plant–mentioned in 134 law review articles & 33 US cases!!


10 minutes a brainless lexis search reveals

10 Minutes? A brainless LEXIS search reveals…

  • But, can I keep abreast of the litigation??

    • Citations to 35 U.S.C. 102 in past 60 days = 29

    • Citation to 35 U.S.C. 161 in 2005 = 0

# of Decisions Since 2002

Novelty, section 102 = 563

Plant Patents, section 161 = 2


Overview

Overview

  • Great thing about plants is there are few cases, but many issues

    • 1. General Discussion of the PPA

      • A quick history lesson… Then, the PPA in 10 words or less.

  • 2. The Social Concerns of Plants

    • Question: Who cares about Neem? Answer: EVERYONE

  • 3. Constitutional Law, International Law & Plants

    • You thought you got out of discussing the “Framer’s Intent” just by taking Patent Law…..THINK AGAIN

  • 4. The Plant Cases

    • Have we fallen from the precedent wagon?

  • 5. Forget plants and keep the chips? (bargaining chips, that is)

    • H. Wegner thinks so! Why plants are taking us down the slippery slope to international harmonization

  • 6. New Legislation

    • Alicia shows her cards: Why were they thinking?

  •  Does talking about plants stress you out? … Background Picture is of St. John’s Wort: SJW is native to Europe but is widely cultivated elsewhere. St. John's wort flowers at the time of the summer solstice, and in medieval Europe it was considered to have powerful magical properties that enabled it to repel evil. The most well-known action of St. John's wort is in repairing nerve damage!


    1 the plight of plants

    Prior to 1930,

    Plants were then just considered unpatentable “products of nature” – SeeDiamond v. Chakrabarty, 447 U.S. 303, 311 (1980)

    Then, Congress in 1930 says…

    the genius of young agriculturists of America will be enlisted in a profitable work of invention and discovery of new plants that will revolutionize agriculture as inventions in steam, electricity, and chemistry have revolutionized those fields and advanced our civilization - Committee on Patents supporting enactment of Plant Patent Act

    1. The Plight of Plants

    • In 1889, Commissioner of Patents says…

      • "I am not aware of any instances in which it has been held that natural product is the subject of a patent, although it may have existed from creation without being discovered." -Ex parte Latimer, 1889 Comm'n Dec. Pat 123, 127 (1889).

    • And, Court says…

      • Patentable subject matter is “anything under the sun that is made by man” – Diamond v. Chakrabarty, 447 U.S. 303 (1980)

    Voodoo lily, Amorphophallus titanum: “most striking plants you're likely to encounter, with a huge, phallic bloom that looks like a mutant, protuberant calla lily[,] and smells like rotting meat” – www.homestore.com

    You read this glowing description and you want to see one? Gossip is that UM has a Amorphophallus titanum located on North Campus


    1 a quick history quiz on the ppa

    1. A Quick History Quiz on the PPA

    • Enacted in 1930 (so, signed by President __??___ )

    • Clue #1: Graduated as an engineer

    • Clue #2:

    Hoover!!


    So you want to be an expert but you only have 10 minutes

    1. A Quick History Quiz on the PPA

    • Enacted in 1930 (so, signed by President __??___ )

    • Clue #1: Graduated as an engineer

    • Clue #2:

    Hoover!!


    1 a quick history quiz on the ppa1

    1. A Quick History Quiz on the PPA

    • Enacted in 1930 (so, signed by President __??___ )

    • Clue #1: Graduated as an engineer

    • Clue #2:

    Hoover!!


    1 the plant patent act 35 u s c 161 164

    1. The Plant Patent Act: 35 U.S.C. 161-164

    • Enacted in 1930 (so, signed by President __??___ )

    • Clue #1: Graduated as an engineer

    • Clue #2:

    Hoover!!


    1 35 u s c 161 164 in 10 words or less

    1. 35 U.S.C. 161-164: In 10 Words or Less

    • Interesting Fact:

      • Were plants the slippery slope to Diamond?

        • PPA was the first IP law in the United States to cover biological materials explicitly

    • 161 –

      • You can get patents for distinct, new, asexually reproducible plants (except tuber-propagated).

    • 162 –

      • Your patent must describe the plant as best you can.

    • 163 –

      • Once you get a patent other people cannot be making, using, importing, selling, etc. your plant. (ok…I confess, this one is over 10)

    • 164 –

      • The Agriculture Dept. can advise the President on “plant stuff.”

    A little embarrassing but once I actually dressed up as a tuber-propagated plant. Here is Saaj & Alicia as Mr. & Mrs. Potato Head, Halloween 2001 (M. Pearson may remember)

    Note to me:many discussed leg. history in comments. What can we make of the changes to 162 (altering 112) but no changes to 102. Did they forget? Or, something else?


    1 plant patenting problems

    Enablement

    As you know: 112 says you can’t get a patent unless you describe an invention so well that so that people who know what they’re doing can read your patent and then make and use your invention.

    Problem: Until we figure out how to build things from DNA sequences, there probably will not be a way to “make” a plant from a written description.

    The solution: Change 112 via 162 so for plants, description = as complete as reasonably possible

    Novelty

    As you know: 102 says that you can’t get a patent on something if someone has written something that describes your invention so well that others can make and use your invention just by reading that other work. You also can’t get a patent if you sold your invention in the US a year before you tried to patent it.

    Problem: Plant inventors are gaming the system by writing all they want about their inventions and selling them abroad and still patenting them in the US. This is because the written stuff never fully describes the plants and the foreign sales don’t count. But, doesn’t it seem like they shouldn’t get patents?

    The Solution: Topic for today…

    1. Plant Patenting Problems

    An explanation for my Grandma & advanced Patents (take no offense, she’s a bright lady)


    2 margo a bagley biopiracy

    2. Margo A. Bagley: Biopiracy

    • Premise: There is a lot of social harm done when the US only considers local uses & knowledge in its novelty determinations.

      • Giant US corporations are pounding on small indigenous cultures merely because they did not write out how to make their medicines. This is a big problem!

    • Example: The Enola Bean, US Patent# 5,894,079

      • Filed 1996, Issued 1999

      • Description: In 1994, field beans that were yellow in color were discovered in a package of dry edible beans purchased in Mexico and brought to the United States. This package of beans contained a variety of different types of beans including browns, blacks, pintos, etc. Later in 1994, the yellow field beans selected from the package of miscellaneous beans were planted in Montrose County, Colorado and allowed to self-pollinate. A segregating population of plants resulted. Many of the resulting plants exhibited abnormally large leaves, approximately twice the size of the leaves of the cultivar of the present invention, and produced pods containing yellow seeds. Additionally, a large number of the plants also produced pods that did not adhere well to the branches of the plant and fell to the ground and other pods exhibited shattering prior to harvest. Individual plants exhibiting small leaves, good adherence of the pod to the branches of the plant, as well as resistance to pod shattering, were selected and harvested individually.

    • There has been a request for reexamination

    What do we think of Biopiracy? Is this a problem?

    Esdenga & Cleary think biopiracy may be no big deal


    3 margo a bagley constitutional law

    3. Margo A. Bagley: Constitutional Law

    • Bagley claims that the words of Art. 1§8[8] “promot[ing] the progress of the useful arts” mandates that courts be changing the “rules for determining novelty” as new technology makes access to information easier.

    • What do YOU think of this argument?


    3 substantive patent law treaty

    3. Substantive Patent Law Treaty

    Article 8, para 1 states:

    “The prior art with respect to a claimed invention shall consist of all information which has been made available to the public anywhere in the world in any form [as prescribed in the Regulations,] before the priority date of the claimed invention.”

    But remember the first-to-file system would also be implemented.

    Is this a good system?


    4 in re legrice

    4.In re LeGrice

    • Issue: Is the prior publication of a rose enough 102(b) prior art to preempt the patent?

    • Held: No, the publications are not enabling because no one can make and use the rose from the description.

    • Why?

      • Strict statutory construction:

        • 35 U.S.C. § 161 engrafts the Plant Patent Act onto the basic patent law

        • It’s a long established rule that prior art MUST BE enabling

      • Legislative History

        • 'The purpose of the bill is to afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system … to remove existing discrimination

      • For the love of plants

        • My interpretation: LeGrice by citing the poetry and such seems to recognize the value-added from plant inventions. The court really seems to be erecting a rule that is non-discriminatory

    • Did LeGrice go too far? Are plant inventors getting too-sweet of a deal? M. Pearson thinks so….

    You think that LeGrice loved plants, check out the town of Taber, Alberta CA that built this corn stalk statue.

    Taberits explain: “The Stalk is symbolic of Taber's agricultural proficiency and represents the quality, taste and success of Taber Corn throughout Western Canada”


    In re elsner following legrice

    In re Elsner: “Following LeGrice”

    • Issue: Can someone publish “substantial” descriptions of a plant, sell the plant abroad and still get a US patent on the plant?

    • Holding: No. For plants, if an inventor does actions that put the plant “in possession of the public” then it is not novel and cannot get a patent.

      • Quotes LeGrice: “there are inherent differences between plants and manufactured articles." [See ALF-7:92-94, ALF-13:49-51]

    • Question: How closely does Elsner follow LeGrice?

    Are geraniums an international commodity?

    YES! (See right: Handbook CD of the International Geranium Society)


    In re elsner plants are unique

    In re Elsner: “Plants are Unique”

    • Elsner says plants are unique because in the case “of plant patents, the touchstone of the statutory subject matter is asexual reproductionof a unique biological organism”

    • Are plants the only “things under the sun made by man” (patentable inventions) that asexually reproduce?

      • You might be wondering if other things like microorganisms fall under the Elsner rule?

        Answer: Probably not!Elsner never mentioned that they did. In re Argoudelis did not

        allow microorganisms to fall under the

        less strict enablement requirements

        of LeGrice.

        Why? Mystery…

        Does this add something to the mix.. For Ming?


    Harold wegner judicial activism

    Harold Wegner: Judicial Activism

    • Wegner argues that we must wait for Congress to change the novelty statute because the US can use their crummy laws (from an international perspective) to haggle for concessions from other nations.

    v.

    • Others say US IP needs to be coherent. It does the US no good to maintain outdated IP laws just so we can bargain for a couple more icons from nations with IP laws substantially less territorial than our own.


    Plant breeder s equity act of 2005

    Plant Breeder’s Equity Act of 2005

    • "(c) Novelty. 

    • "(1) In general. Except as provided in ¶ (2), no plant patent application shall be denied, nor shall any issued plant patent be invalidated, on the grounds that the invention was sold or otherwise disposed of."(2) Exceptions…

      • "(A) more than 1 year prior to the date of the application for patent in United States,

        • the invention was sold or otherwise disposed of to other persons in the UnitedStates,

        • by or with the consent of the inventor or discoverer, or the successor in interest of the inventor or discoverer, for purposes of exploitation of the invention;

      • "(B) except as provided in subparagraph (C), more than 4years prior to the date of the application for patent in the United States,

        • the invention was sold or otherwise disposed of to other persons in a foreign country,

        • by or with the consent of the inventor or discoverer, or the successor in interest of the inventor or discoverer, for purposes of exploitation of the invention; or

      • "(C) more than 6 years prior to the date of the application for patent in the United States,

        • in the case of a tree or vine,

          • the invention was sold or otherwise disposed of to other persons in a foreign country,

          • by or with the consent of the inventor or discoverer, or the successor in interest of the inventor or discoverer, for the purposes of exploitation of the invention."

  • ***

  • “Old man tree”: Many of the trees in Beijing's forbidden city are so old they cannot support their own weight and they need to use these big green crutches. Could these trees have a US patent under this statute?

    Cohen says offensive when harmonization talks in process


    Thanks

    Thanks!

    • Thank you for your careful reading

    • Thank you for paying attention

    • Thank you for your comments: they all came out smelling like a rose

    Did you really think I could make all of this without some pictures of the farm? Not if you know me well…see here for pics from Peck


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