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United States - Patentability of Plants

For many years it has been the practice of the United States Patent and Trademark Office to grant utility patents for new plants and seeds if they otherwise met the requirements for patentability. However, until recently, this practice had never been endorsed by the courts. The patentability of new plants came before the Court of Appeals for the Federal Circuit in Pioneer Hi Bred International Inc v. J.E.M Inc. The court upheld the practice of the PTO. After noting that the Supreme Court in Diamond v. Chakrbarty had emphasized the intent of Congress that the possible bounds of patent protection were to be drawn broadly, the court went on to dismiss the defendant's argument that the patent statute could not have been intended to provide for utility patent protection for plants because there were other specific statutes providing for different means of protection for plants, namely the Plant Patent Act and the Plant Variety Protection Act. In responding to these arguments, the court pointed out that it was quite possible for an object to be the subject of more than one form of protection, for example design patent and copyright protection and since neither of the statutes referred to by the defendants precluded separate protection by way of a utility patent for plants, no such limitation should be read into them.


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