Opening Statement of Rep. Darrell Issa

Thursday, September 19, 2002

Subcommittee on Courts, The Internet, and Intellectual Property

Oversight Hearing on H.R. 5119 "The Plant

Breeders Equity Act of 2002"

Mr. Chairman, I want to thank you for holding a hearing on H.R. 5119 "The Plant

Breeders Equity Act of 2002."

In January of 2001, the United States Patent and Trademark Office (PTO) changed its examination guidelines for plant patent applicants. This internal policy change required PTO examiners to reject plant patent applications if a foreign based plant breeder's rights certificate was issued more than one year before filing the same plant patent in the U.S. Prior to the PTO change of policy, a plant variety could be sold outside the U.S. for an unlimited number of years without barring a species of plant to be patented as long as the variety was not sold, offered for sale or publicly used in this country for more than one year prior to its filing.

The National Association of Plant Patent Owners (NAPPO) has discussed a few potentially viable ways to address the damaging changes in examination guidelines. One option would be a judicial appeal, which could potentially lead all the way to the Court of Appeals for the Federal Circuit. This would become extremely costly and could jeopardize hundreds of applications. Another option is for the PTO to change their policy on the examination guidelines for plant patents. Unfortunately, the PTO is confident they are on firm legal ground and will not reverse their decision at this time. A third option, a legislative approach, has support by the PTO. This approach would provide the quickest remedy to addressing the examination guidelines changes.

On July 15, 2002, I introduced H.R. 5119, "The Plant Breeders Equity Act of 2002." This bill assists breeders of horticultural crops by amending the Plant Patent Act to remedy the harm caused by a PTO legal reinterpretation. H.R. 5119 would establish a legislative remedy whereby a 10-year grace period is established for plants during which the time period for foreign plant patents will not jeopardize the U.S.'s plant patenting opportunities.

This 10-year grace period was established as a result of a recommendation by PTO to offer a single grace period in order to avoid complications. This is needed because some species may be held in quarantine by the USDA for 10 or more years because of their rigid requirements for allowing foreign species into this country.

I am certain many of my colleagues on this committee have horticulture businesses and constituents that are being adversely affected by the PTO. The ramifications of the PTO's actions have jeopardized the chances of hundreds of applicants filing for plant patents. If this legislation is not passed, numerous nursery growers and plant patent owners will suffer financially and continue to irreparably harm this industry.

I urge the chairman to schedule a mark up this bill and report this bill favorably to the full committee as soon as possible.

Again, I thank the chairman for holding this hearing on this bill.