Legal Development Updates

Pioneer Hi-Bred International v. J.E.M. Ag Supply, Inc.

In this case recently decided by the U.S. Supreme Court, Pioneer Hi-Bred International, the owner of seventeen utility patents for inbred and hybrid corn lines, originally sued J.E.M. AG Supply, Inc. and others for infringing its patents by reselling patented seed without a license. In response, the alleged infringers claimed that Pioneer Hi-BredÍs patents were invalid. They argued that because the Plant Patent Act (PPA) and the Plant Variety Protection Act (PVPA) were so specific, Congress must have intended these acts to be the sole statutory means for protecting plant life. Such a conclusion would have the effect of invalidating any plant-related utility patents, including utility patents covering inventive hybrid and inbred seed lines.

In a 6-2 decision, the U.S. Supreme Court rejected J.E.M. AG SupplyÍs argument and ruled that plants and seeds are eligible for utility patents under federal patent law. Specifically, the U.S. Supreme Court found that neither the Plant Variety Protection ActÍs certification program for new seed varieties, nor the Plant Patent Act, under which the U.S. Patent & Trademark Office grants patents for asexually reproduced plants, precludes the grant of utility patents for plants and seeds. In so holding, the Supreme Court relied heavily upon the absence of any evidence that Congress, in passing the PPA and the PVPA, intended to preclude plant developers from alternatively seeking utility patents for plants. The Supreme Court noted repeatedly that the U.S. Patent & Trademark Office has granted utility patents for plants for at least 16 years, with over 1800 such patents now granted.

The American Seed Trade Association submitted an amicus curiae brief in the Supreme Court in support of Pioneer. Our brief focused on the 1800+ patents covering plant-related subject matter. The ASTA brief described the industry reliance upon these patents and the substantial investment required to pursue the patented technologies. The brief included a listing of the broad spectrum of entities owning such patents„from individuals to small- and mid-sized businesses to global corporations. The ASTA brief also identified numerous governmental agencies owning such patents, including the U.S. Department of Agriculture and counterpart agencies in foreign countries. Other points raised in the ASTA brief, including the more stringent requirements for utility patents relating to disclosure and inventiveness, were discussed in the Supreme Court decision.

This decision represents a significant victory for the seed industry, especially important for research and development in seed. ASTA was privileged to have participated in the judicial process on behalf of the seed industry.