statement of

James A. Toupin

General Counsel

United States Patent and Trademark Office

before the

Subcommittee on Courts, the Internet and Intellectual Property

Committee on the Judiciary

U.S. House of Representatives

September 19, 2002

Mr. Chairman, Ranking Member Berman, and Members of the Subcommittee:

Thank you for this opportunity to discuss the "Plant Breeders Equity Act of 2002" and the United States Patent and Trademark Office's (USPTO) examination of applications for plant patents. We commend Congressman Issa for introducing this bill and bringing attention to the important issues involved.

The Plant Patent Act of the United States was enacted in 1930 and has encouraged the development of new plant varieties in the United States since that time. Our country has benefited immensely as a result. Accordingly, the USPTO is very concerned about protecting the rights of innovative plant breeders in the United States and in achieving the Plant Patent Act’s long-held goal of promoting innovation in the plant growing industry.

The USPTO is aware of the serious concerns in the industry regarding changes USPTO made in examination procedures to bring those procedures in accord with a decision of the Board of Patent Appeals and Interferences. Indeed, we have been in touch with representatives of the industry to discuss options to address those concerns and to remedy the adverse effects identified by the United States plant patent community.

The central plant patent issue at hand is the effect of certain printed publications on the patentablility of new plant varieties. According to section 102(b) of title 35 of the United States Code, a printed publication anywhere in the world can serve as a statutory bar to patentability if the publication, combined with knowledge in the prior art, would enable one of ordinary skill in the art to reproduce the claimed invention. (See In re LeGrice, 301 F.2d 929 (CCPA 1962)). This rule is generally applicable to all fields of invention. The plant patent statute, in section 161 of title 35, states specifically that the provisions of title 35, including section 102, also apply to plant patents. On this basis, an enabling description of a plant invention in a printed publication will bar a patent, including a plant patent, from being granted on that invention if the publication took place more than one year before the date of application.

As noted in LeGrice, these general principles of patent law apply in the particular context of plant inventions. The USPTO’s Board of Patent Appeals and Interferences subsequently held in Ex Parte Thomson (24 USPQ2d 1618 (Bd. Pat. App. & Int. 1992)) that if the plant in question was publicly available anywhere in the world, then a publication sufficiently describing the plant combined with knowledge in the prior art, would enable one of ordinary skill in the art to reproduce the claimed plant. This would therefore constitute an enabling disclosure and, if done more than one year prior to the filing date of the patent application in the United States, would bar patentability. Prior to the Thomson decision, foreign publications, coupled with public availability solely in a foreign country, were not thought to be patent defeating in the plant patent context.

It should be noted that a plant which is publicly available so as to enable a “printed publication” might not be in public use or on sale in such a way as to bar patentability independent of the publication. As section 102 does not limit the applicability of printed publications by geographical area, the publication can be enabled anywhere in the world .

The plant growing industry has been concerned about the effect of the USPTO’s application of these principles to pending plant patent applications. In particular, plant growers and other industry representatives contend that application of these patent principles to plant patents seriously harms the industry because of the specific quarantine requirements that they need to undergo prior to importing plants into the United States. It appears that the USPTO’s relatively recent application of the Ex parte Thomson decision to plant patent applications has come as a surprise to the industry and created substantial uncertainty.

The USPTO takes these concerns seriously and has been working with industry representatives to consider options for resolving the uncertainty of plant patent rights. Among the options being considered is a possible legislative solution. If such an option were to move forward, any proposed legislative change should be carefully evaluated to ensure that plant growers are able to achieve the intellectual property protection they need and that the interests of the general public are protected.

The Plant Breeders Equity Act of 2002 represents a viable option to address the concerns raised by the plant growing industry. While the Administration and the USPTO have not yet determined whether the bill's approach is the most equitable for all parties involved, let me offer a few observations.

First, the bill appears to be tailored to take into account the specific exigencies that affect this industry -- both the quarantine regime and the length of growing cycles before plants will bear fruit or flowers. Second, the substantive amendment proposed in the bill is confined to chapter 15 of title 35, within the particular Plant Patent Act sections, which contains existing specific requirements that take into account the different nature of our plant patent and utility patent systems. Third, the bill appears to be tailored specifically to the issue of printed publications in the context of plant patents and should therefore not affect other areas of prior art or utility patents. Last, to the extent that Congress regards retroactive application of legislation as necessary to ensure consistency, consideration and protection should be given to parties that have relied upon the current state of the law in planning their activities.

The USPTO looks forward to working with you, Mr. Chairman, the members of this subcommittee, and all interested parties to develop an effective and equitable resolution to this issue.