Sometimes the Other Two types of patent get short shrift in the mainstream patent press. Not so this week. The Court of Appeals for the Federal Circuit (CAFC) has just decided In re: Walter F. Beineke, Dockets 2011-1459, -1460, ___ USPQ ____. Beineke appealed from the USPTO’s rejection of his claims for patent protection for varieties of white oak trees that exhibit stronger genetic traits than do other trees of that species that he found in a yard not his own. Those trees are about 115 years old, making proof of human intervention in their breeding — um — difficult. Beineke couldn’t show to the Examiner’s satisfaction that the trees were “cultivated.”
The patentability of plants is established under 35 USC 161, which states:
Whoever 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, may obtain a patent therefor, subject to the conditions and requirements of this title.
Beineke argued that, under 161, a human being need not participate in the creation of the new plant; the USPTO argued that, under 161, no plant is patentable unless a human being participate in its creation. This clash led to two rejected patent applications, two BPAI appeals and, finally, to the consolidated appeal before the CAFC.
The CAFC held that a plant must have been created by human activity and it must have been created by its inventor. Thus, a plant, it is now clear, cannot be patented unless there has been some human intervention in the breeding of that plant. The Court says, “[T]he … Act was not meant to include plants discovered by chance by plant explorers and the like.”