Extract

The U.S. Patent and Trademark Office (PTO) has granted at least 9,000 utility patents directed to non-transgenic plant varieties. A substantial portion – over 4,000 – are directed to maize varieties, and nearly as many – over 3,000 – claim soybean varieties. Some varieties of wheat, canola, oats, barley, rye, sunflower, cotton, and selected other crop plants have also been the subject of utility patents, but the rate of patenting for these crops appears to be relatively light compared to that of corn and soybeans.It appears that roughly 90–95 per cent of U.S. utility patents that have been granted on non-transgenic plant varieties are of recent enough vintage that they are still in force as of the time of this writing, assuming that the maintenance fees have been paid.Little is known, at least publicly, about these patents as a group. There is virtually no academic writing,possibly only one reported case decision in an enforcement action,and only a tiny number of decisions reviewing PTO patentability determinations.Basic descriptive and normative questions – such as how the PTO is applying standards of patentability over the prior art to plant variety claims, and how the PTO should be doing so – have remained unexamined. This gap in the literature is significant not only for U.S. practice, but also for the course of European law, given the likelihood that patenting activity will increase significantly in respect to plant varieties in the coming years in the wake of the Tomato II and Broccoli II decisions.