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“Dying” Plant Applications Resuscitated

August 16, 2004
Shaffer, Robert F.

Decision icon Decision

Last Month at the Federal Circuit - September 2004

Judges: Lourie (author), Clevenger, and Bryson

In In re Elsner, No. 03-1569 (Fed. Cir. Aug. 16, 2004), the Federal Circuit vacated and remanded the Board’s decision rejecting applicants’ plant applications under 35 U.S.C. § 102(b). The Board determined that Appellants’ published Plant Breeder’s Rights (“PBR”) applications anticipated their claims in view of the foreign sales of the claimed plants. The issue of first impression was whether evidence of the foreign sale of a claimed reproducible plant variety may enable an otherwise nonenabled printed publication disclosing that plant, thereby creating a § 102(b) bar. While the Court held that the publication of the applications coupled with foreign sales of the plants may constitute a § 102(b) bar to patentability, it vacated and remanded the case because (1) the record was silent on the extent to which the foreign sales were known to the public, and (2) the Board did not adequately address the degree to which availability of the plants through foreign sales enabled the preparation of the claimed plants.

Wilhelm Elsner, a plant breeder in Germany, filed an application for a Community Plant Variety Rights (“CPVR”) Certificate, or PBR, at the Community Plant Variety Office (“CPVO”) in Europe for a type of geranium named “Pendec.” Elsner’s application was listed in the CPVO Official Gazette that was published in December 1997. That listing only disclosed the names and addresses of the breeder and its representative, a statement of botanical classification, and a provisional denomination for the plant. In July 1998, a sale of the Pendec geranium occurred in Germany. Elsner withdrew the application in May 1999, and it did not therefore mature into a CPVR certificate. In September 2000, Elsner filed a plant patent application claiming the Pendec geranium.

The Board affirmed the Examiner’s rejection of the only claim in the application as anticipated under § 102(b) on the ground that the CPVO listing disclosed the invention and that the sales placed the skilled artisan in possession of the invention more than one year before the effective filing date.

On appeal, Elsner argued that foreign activity cannot cause a nonenabled publication to constitute a statutory bar under § 102(b). Appellants further asserted that, because foreign sales are not prior art under the patent statute, they may not be considered within the knowledge of one of skill in the art and cannot be used to enable an otherwise nonenabling publication. Accordingly, Appellants claimed that the published PBR applications are not enabled because it is impossible to recreate the claimed plants from the textual descriptions alone and, thus, are not effective as references.

Noting the difference between plants and statutorily distinct inventions, the Court disagreed. It reasoned that in the case of plant patents, the touchstone of the statutory subject matter is asexual reproduction of a unique biological organism. Thus, a statutory bar arises when a publication, which only identifies the plant that is invented, is combined with a foreign sale that puts one of ordinary skill in the art in possession of the plant itself. In coming to its conclusion, the Court cautioned that the precise focus of the analysis is not whether the foreign sales are themselves § 102(b) prior art, but whether the publication has placed the claimed invention in the possession of the public before the critical date. Thus, foreign sales of the claimed plants may be within the knowledge of the skilled artisan and may be considered to provide the public with access to Appellants’ inventions.

Even though the Court ultimately agreed with the PTO that foreign sales may enable an otherwise nonenabling publication, it found that factual issues remained. For example, with respect to the accessibility of the foreign sales of the claimed invention, the Court found that it was unclear whether a skilled artisan would have known of the sales. In comparing it to a printed publication under § 102(b), the Court stated that the sale must have been known to the public and not merely an obscure or solitary occurrence that would go unnoticed to those skilled in the art. Therefore, the Court remanded for further factual findings relating to the accessibility of the foreign sales and the reproducibility of the claimed plants from the plants that were sold.