Mature Oak Trees Found in Yard Not Entitled to Patent Protection Under
August 06, 2012
Last Month at the Federal Circuit - September 2012
Judges: Dyk (author), Schall, Reyna
[Appealed from: Board]
In In re Beineke, Nos. 11-1459, -1460 (Fed. Cir. Aug. 6, 2012), the Federal Circuit affirmed the rejection of two plant patent applications under 35 U.S.C. § 161.
After noticing in someone’s front yard two white oak trees that “appeared to display superior genetic traits as compared to other white oak trees, such as excellent timber quality and strong central stem tendency,” Walter F. Beineke planted acorns from the trees and observed the progeny. Slip op. at 2. Beineke then asexually reproduced the trees and found that the reproductions ran true to the originally discovered trees and to each other in all respects. Beineke concluded that he had discovered two new and distinct varieties of white oak, and applied for plant patents on both trees under § 161.
The examiner at the PTO rejected Beineke’s claims on the basis that the trees were not found in an uncultivated state, and a divided Board affirmed. Beneike appealed.
On appeal, the Federal Circuit stated that “[i]t is settled that an applicant for a patent under section 161 must establish that the inventor has ‘recognized [the plant’s] uniqueness and difference,’ and has ‘take[n] the step of asexual reproduction.’” Id. at 6 (alterations in original) (citations omitted). The Court noted that the parties did not dispute these requirements, but offered differing interpretations of the statute in other respects. The Court then considered whether the trees were patentable (1) under the language of the original 1930 Plant Patent Act (“1930 Act”), which is incorporated into the present statute; and (2) under the 1954 additions to the plant patent statutes, which have been carried forward in the present statute.
Regarding the 1930 Act, the Court held that Beineke had not demonstrated that the trees were created in their inception by human activity, or that they were created by the inventor, and that both of these factors were required for patent protection. “[The legislative] history demonstrates that the 1930 Act was not meant to include plants discovered by chance by plant explorers and the like,” and that protection is provided “to only those plants (e.g., sports, mutants, and hybrids) that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the . . . one applying for the patent.” Id. at 15.
The Court also held that the trees were not patent eligible under the 1954 additions to the statute. The Court found that the 1954 amendments applied only to “newly found seedlings” and that Beineke conceded that the oak trees were not newly found seedlings. Id. at 16. The Court noted that “[b]ecause Beineke does not meet the other requirements of section 161 either as originally enacted or as amended in 1954, . . . [it] need not determine what level of human cultivation of the area in which a seedling was found at its inception is necessary to satisfy the statute.” Id. at 19. The Court concluded that “[t]he Board correctly determined that the mature oak trees found by Beineke in the front yard of a home were not entitled to plant patent protection under section 161.” Id.