Addressing whether a plant found in the wild and asexually reproduced is patentable under 35 U.S.C. § 161, the U.S. Court of Appeals for the Federal Circuit upheld the decision of the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences (the Board) rejecting two plant patent applications on the grounds that the claimed oak trees had not been “cultivated” as required by 35 U.S.C. § 161. In re Beineke, Case Nos. 11-1459, -1460 (Fed. Cir., Aug. 6 2012) (Dyk , J.).
Beineke filed two plant patent applications, each directed to a particular oak tree. In 1980, Beineke had observed two oak trees that appeared to display superior genetic traits in comparison with other oak trees. At that time, both trees were more than 100 years old. Beineke planted acorns from the two trees, observed the resulting offspring and concluded that these progeny trees exhibited the same superior traits. Beineke asexually reproduced the trees and once again observed the same superior traits. Beineke then filed patent applications.
The patent examiner rejected both applications on the grounds that Beineke failed to show that the claimed trees were in a “cultivated state” as required by §161, and the Board affirmed the rejection. Beineke appealed.
In affirming the Board’s decision, the Federal Circuit interpreted the 1930 Plant Patent Act as providing “patent protection to only those plants … that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor, that is, the one applying for the patent.” The Federal Circuit held that Beineke met neither of these requirements because he did not create the oak trees but merely found them. The Federal Circuit further held that the 1954 amendments to the Plant Patent Act provided Beineke no relief because those amendments only extended patent protection to “newly found seedlings,” and the oak trees at issue were not seedlings. Thus, the Federal Circuit concluded that §161 did not provide patent protection for plants discovered or found in the wild, but only those that were created by the inventor.