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Citation:
Kenneth E. Krosin, Are Plants Patentable under the
Utility Patent Act, 67 J. Pat. & Trademark Off. Soc'y
220, 238 (1985)o

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Kenneth E. Krosin' ARE PLANTS PATENTABLE UNDER
THE UTILITY PATENT ACT?
The day is fast approaching when scientists will be able
to improve commercially valuable crops through genetic
engineering. Within the past few years gene splicers have
been able to insert a variety of foreign genes into plant cells
and to regenerate those cells into fully-formed plants yielding
the proteins encoded by those genes. Notable experimental
results include antibiotic-resistant tobacco plants; sunflower
and alfalfa plants that produce phaseolin, the principal bean
storage protein; and tobacco plants that produce yeast
alcohol dehydrogenase, a yeast enzyme.'
Recent advances have also been made in the ability to
regenerate fully-formed plants from single cells, an essential
requirement for achieving the ultimate goal of modifying
plants through recombinant DNA techniques.' Thus, in
addition to alfalfa, sunflower and tobacco, mature plants
have been regenerated from cells and protoplasts of corn,
potato, rice, soybean, and tomato. 4 Advances also have
been made in fusing protoplasts of different species and
regenerating the fused protoplasts into hybrid plants. Hybrid

I Partner, Howrey & Simon, Washington, D.C. Copyright 1985 Kenneth E.


Krosin.
2 See M. deBlock, et al., Expression of Foreign Genes in Regenerated Plants
and in Their Progeny, 3 The Embo Journal 1681 (1984); J.D. Kemp, et al., Plant
Structural Gene Expression, European Patent Application 84302584.2 (filed April
16, 1984); M. Drummond, Launching Genes Across Phylogenetic Barriers, 303
Nature 198 (May 19, 1983).
3 See, e.g., F.A. Bliss, The Application of New Plant Biotechnology to Crop
Improvement, 19 HortScience 43 (February 1984).
4 See O.L. Gamborg, et al., New Plant Variants and Hybrids from Somatic
Cells, Advances in Gene Technology: Molecular Genetics of Plants 101 (1983); M.
Duffey, et al., Regeneration of Alfalfa Plants From Somatic Cells Cultivated In
Vitro After Long-Term Subculture at 4 Degrees C, 39 Experientia 661 (1983);
Better In Vitro Method for Regenerating Plants, Chemical & Engr. News (April
18, 1983); Calgene and Nestec Tie-Up On Soybeans, Biotechnology News 8 (May
1, 1984); K.A. Barton, et al., Regeneration of Intact Tobacco Plants Containing
Full-Length Copies of Genetically Engineered T-DNA, and Transmission of T.-
DNA to RI Progeny, 32 Cell 1033 (April 1983); P. Zambryski, et al., The Use of
the Ti Plasmid of Agrobacterium to Study the Transfer and Expression of Foreign
DNA in Plant Cells: New Vectors and Methods (1983); A.W. Galston, The Use of
Protoplasts in Plant Propagation and Improvement, published in Propagation of
Higher Plants Through Tissue Culture 200, U.S. Department of Commerce, National
Technical Information Service, CONF-7804111 (April 16-19, 1978).

220--
Journal of the Patent and Trademark Office Society

tobacco plants, for example, have been developed by this


method.'
Faced with the rapid development of plant genetic engi-
neering and the inevitable efforts of the companies involved
in this new technology to obtain the broadest possible intel-
lectual property protection, the U.S. Patent & Trademark
Office ("PTO") recently announced that plants protectable
under the Plant Patent Act of 1930 6 ("PPA") or the Plant
Variety Protection Act of 19707 ("PVPA") were not patent-
able subject matter under Section 101 of the Patent Act of
1952 (the "Utility Patent Act" or "UPA"). 8 This article
advocates in response to that announcement that not only
genetically engineered plants, but all plants which have been
modified in some way by human intervention are patentable
subject matter under UPA Section 101, regardless of whether
or not they are also patentable under the PPA or PVPA.
A. Statutory Framework
The UPA, PPA and PVPA differ in several material
respects. Under the UPA a patent may be obtained on any
"process, machine, manufacture, or composition of matter,
or any . . . improvement thereof," 35 U.S.C. 101, provided
the invention is useful, novel and unobvious to one of ordi-
nary skill in the pertinent art.9 There are two principal advan-
tages to a utility patent. First, the invention can be claimed
in a variety of ways.' Second, the patent is infringed by
anyone who makes, uses or sells any of the claimed inven-
tions. The principal disadvantage of a utility patent is that
the specification must be written "in such full, clear, concise

5 See P.S. Carlson, U.S. Patent 3,832,801, Fertile Interspecific Hybridization


Cell Fusion for Higher Plants (issued September 3, 1974); D.W. Galbraith, U.S.
Patent 4,300,310, Identification and Sorting of Plant Heterokaryons (issued
November 17, 1981).
6 35 U.S.C. 161-64.
7 7 U.S.C. 2321-2583.
8 35 U.S.C. 101.
9 The requirements for novelty under the UPA are spelled out in 35 U.S.C.
102, while the requirements for non-obviousness are set forth in 35 U.S.C. 103.
10 For example, both a product and the method for producing it may be claimed
in the same patent, and the claims for each may range in scope from the specific
embodiment disclosed in the patent specification to a broad generic definition
encompassing a multitude of specific embodiments.

221
May 1985, Vol. 67, No. 5
and exact terms" as to enable one of ordinary skill in the
pertinent art to make and use the invention, and must "set
forth the best mode contemplated by the inventor of carrying
out his invention." 35 U.S.C. 112.
Under the PPA a patent may be granted to whoever
"invents or discovers and asexually reproduces any distinct
and new variety of plant, including cultivated sports, mutants,
hybrids, and newly found seedlings, other than a tuber prop-
agated plant or a plant found in an uncultivated state." 35
U.S.C. 161. Asexual reproduction covers classical vege-
tative propagation techniques such as rooting of cuttings,
layering, budding, grafting, and marching."
, The principal advantage of the PPA is that the descrip-
tion of the plant need only be "as complete as is reasonably
possible," 35 U.S.C. 162, as compared with the more strin-
gent requirements of UPA Section 112. 12 There are three
principal disadvantages to the PPA. First, the patent may
contain only one claim which must be directed solely to the
specific variety described in the specification; it is not pos-
sible to claim the plant generically or to vary the scope of
the claims as with utility patents. Second, the PPA only
grants the right to exclude others from "asexually repro-
ducing the plant or selling or using the plant so reproduced."
35 U.S.C. 163. This has been interpreted by some courts
as requiring proof that defendant derived his plant from
plaintiff's plant by asexual reproduction. 13 This places a
heavy burden on plaintiff, since he must show that defendant
misappropriated plaintiff's plant or plant cuttings. Third,
only the whole plant and not portions thereof such as seeds,
fruit, or flowers may be claimed, and the patentee may not

11 U.S. Patent & Trademark Office, Manual of Patent Examining Procedure,


1601 (5th ed. rev. 1983).
12 For example, In re LeGrice, 133 U.S.P.Q. 365, 378, 301 F.2d 929 (CCPA
1962), the court held that there is "no requirement for any how-to-make disclosure
in the application for a plant patent." The court did hold, however, that there is a
"how-to-asexually reproduce" disclosure requirement, which has since been adopted
in Rule 163(a) of the Patent and Trademark Office Rules of Practice, 37 C.F.R.
1.163(a).
13 See Yoder Bros., Inc. v. California-Florida Plant Corp., 537 F.2d 1347, 1380
(5th Cir. 1976), cert. denied, 429 U.S. 1094 (1977); Kim Bros. v. Hagler, 167
F.Supp. 665 (S.D. Cal. 1958), aff d, 276 F.2d 259 (9th Cir. 1960); Cole Nursery
Co. v. Youdath Perennial Gardens, 17 F.Supp. 159 (N.D. Ohio 1936).

222
Journal of the Patent and Trademark Office Society

preclude others from using or selling those parts. Thus, for


example, a PPA patented plant can be asexually reproduced
in a foreign country and the flowers sold in the United States
without infringing the patent.
Section 161 of the PPA provides that the UPA is appli-
cable to plant patents, except as otherwise provided in the
PPA. Hence, it has been held that the obviousness require-
ment of UPA Section 103 is applicable in determining whether
a novel plant is patentable. Yoder Bros., Inc. v. California
Plant Corp., supra, 537 F.2d at 1378.
Under the PVPA the breeder of a "novel variety" of
sexually-reproduced plant other than a first generation hybrid
may obtain a "certificate of plant variety protection" from
the Plant Variety Protection Office of the Department of
Agriculture. 7 U.S.C. 2482. The term "novel variety" applies
to seeds, transplants and plants and is satisfied if there is (1)
"distinctness" in the sense that the variety clearly differs
by one or more identifiable morphological, physiological or
other characteristics; (2) "uniformity" in the sense that any
variations are describable, predictable and commercially
acceptable; and (3) "stability" in the sense that the variety,
when sexually reproduced or reconstituted, remains
unchanged with regard to its essential and distinctive char-
acteristics. 7 U.S.C. 2401(a). The term "sexually repro-
duced" is defined as including "any production of a variety
by seed." 7 U.S.C. 2401(f). A PVPA certificate has a term
of 18 years from the date of issuance. 7 U.S.C. 2483(b).
A PVPA application must contain the variety's name,
a "description of the variety setting forth its novelty" and
a "description of the genealogy and breeding procedure
when known." The applicant is also required to deposit in
a public repository a "viable sample of basic seed necessary
for propagation of the variety." 7 U.S.C. 2422.
Infringement can occur under the PVPA by (1) selling
the novel variety or offering it for sale, or transporting or
delivering the novel variety, (2) importing the novel variety
into, or exporting it from, the United States, (3) sexually
multiplying the novel variety as a step in marketing it, (4)
using the novel variety in producing a hybrid or different
variety therefrom, (5) using seed of the novel variety, con-
tainers of which have been marked "propagation prohib-

-223
May 1985, Vol. 67, No. 5

ited," or using progeny thereof to propagate the novel vari-


ety, (6) "dispensing" the novel variety to another in a form
which can be propagated, (7) performing any of the foregoing
acts in which the novel variety is multiplied by means other
than sexual reproduction, or (8) instigating or actively induc-
ing performance of any of the foregoing acts. 7 U.S.C. 2541.
As with the UPA and the PPA, infringement may be reme-
died under the PVPA by injunction or damages not less than
a reasonable royalty and may be trebled, where appropriate.
7 U.S.C. 2563, 2564.
The principal advantage of the PVPA is that the scope
of protection afforded is broader than under the PPA. There
are two principal disadvantages to the PVPA. First, like the
PPA, the certificate of plant variety protection only covers
the particular novel variety described in the application.
Second, a viable sample of the basic seed necessary for
propagation of the variety must be deposited in a public
repository.
B. Framing the Issues
The starting point in addressing the question of whether
human-modified plants are patentable subject matter under
the UPA is the Supreme Court's 1980 decision in Diamond
v. Chakrabarty, 447 U U.S. 303 (1980). Chakrabarty discov-
ered that plasmids, small closed rings of DNA capable of
autonomous replication in bacterial cells, control the ability
of certain bacteria to degrade specific crude oil components.
He also discovered that four different plasmids, each capa-
ble of controlling the degradation of a different oil compo-
nent, could be transferred into and maintained stably in
bacterium of the genus Pseudomonas, which alone had no
oil-degrading capacity but which having these plasmids could
break down multiple crude oil components.
The Court held that Chakrabarty's claims to the modi-
fied bacterium covered statutory subject matter under UPA
Section 101. While this case did not involve the patentability
of plants, the PPA and PVPA were central to the Court's
analysis. In particular, the PTO, which opposed issuance of
the patent, argued that living things were not patentable
unless Congress passed a statute expressly making them so,
as it did for asexually reproduced plants under the PPA and

224
Journal of the Patent and Trademark Office Society
sexually reproduced plants under the PVPA. Since there
was no comparable statute for bacteriaindeed, the PVPA
expressly excluded bacteria from its coverage," and the
PPA had been judicially interpreted to exclude bacteria"
the PTO argued that Chakrabarty's bacteria were not patent-
able subject matter under UPA Section 101.
The Supreme Court rejected this argument on two
grounds. First, it recognized that the "relevant distinction"
between patentable and non-patentable subject matter "was
not between living and inanimate things, but between prod-
ucts of nature, whether living or not, and human-made
inventions." 447 U.S. at 313. Since Chakrabarty had "pro-
duced a new bacterium with markedly different character-
istics from any found in nature and one having the potential
for significant utility," id. at 310, it satisfied this basic
requirement.
Second, and more directly pertinent to the present dis-
cussion, the Court explained that Congress had not enacted
the PPA and PVPA because it believed that statutory autho-
rization was needed to patent living things, but because there
were two perceived impediments to patenting plants under
the UPA: (1) plants, even those artificially bred, had been
held to be simply products of nature,16 and (2) plants, which
might differ from each other only in color or perfume, could
not be described adequately under the "written description"
requirement of UPA Section 112.
Neither of these impediments provides a basis for con-
cluding that plants are non-patentable subject matter under
the UPA. The first impediment has no current viability with
respect to human-modified plants because it runs directly

14 See 7 U.S.C. 2402(a).


15 In re Arzberger, 112 F.2d 834, 838 (C.C.P.A. 1940); Funk Brothers Seed Co.
v. Kalo Inoculant Co., 333 U.S. 127, 137 (1948) (Burton, J1, dissenting).
16 This conclusion derived from the decision in Ex Parte Latimer, 1889 C.D.
123, 46 O.G. 1638 (Comr. 1889). In that case, Latimer claimed as his invention the
needle fiber of the Pinus australis tree. The Commissioner of Patents affirmed the
examiner's rejection, explaining that the fiber Latimer discovered was simply "a
natural product and can no more be the subject of a patent in its natural state when
freed from its surroundings than wheat which has been cut by a reaper or by some
new method of reaping can be patented as wheat cut by such a process." Id. at
125.

225
May 1985, Vol. 67, No. 5
contrary to the Supreme Court's broad proclamation in
Chakrabarty that patentable subject matter under the UPA
encompasses "anything under the sun that is made by man."
447 U.S. at 309. Indeed, it is noteworthy that at the time the
PPA was enacted, Congress itself recognized that there was
no basis for this impediment with respect to plants modified
by human intervention:
[A] plant discovery resulting from cultivation is unique, isolated,
and is not repeated by nature, nor can it be reproduced by nature
unaided by man. . . .
***
It is obvious that nature originally creates plants but it can not
be denied that man often controls and directs the natural processes
and produces a desired result.
***
Furthermore, there is no apparent difference, for instance,
between the part played by the plant originator in the development
of new plants and the part played by the chemist in the develop-
ment of new compositions of matter."
As to the second impediment, the perceived inability to
describe plants with sufficient particularity to satisfy the
requirements of Section 112 has no bearing on the question
of whether plants are patentable subject matter under Sec-
tion 101. Thus, if not for the "product of nature" cases,
Congress simply could have amended Section 112 to include
the reduced disclosure requirements of PPA Section 162.
The only colorable argument that plants should not be
deemed patentable subject matter under the UPA is that the
PPA and PVPA provide the exclusive methods of protecting
asexually and sexually reproduced plants. In other words,
passage of those statutes implicitly removed plants from the
broad scope of Section 101.
The PTO recently adopted this position, as reflected in
the comments of Rene Tegtmeyer, Assistant Commissioner
for Patents, at the October 18, 1984 annual meeting of the
Industrial Biotechnology Association:

17 S. Rep. No, 315, 71st Cong., 2d Sess. 1, 6-7 (1930).

226
Journal of the Patent and Trademark Office Society

Plants, or parts of plants including cells, where the plant can be


protected under the PPA or PVPA, are regarded as not patentable
under Section 101 of the general patent law. Congress carved these
plants out for protection under special laws, the PPA and PVPA.
However, where plant cells or plant parts may have other utilities
than as merely plants, such as medicine, flavor extract, perfume
or lubricant, and the cell or plant part is claimed only in the context
of its other use or use claims are utilized, the claimed products or
their uses are considered patentable subject matter under the
general patent law. Similarly, methods for producing or processing
new plants would normally be patentable under the general patent
law. '8
The response to this position has been quick in coming.
It was reported at the winter meeting of the American Intel-
lectual Property Law Association that an unidentified patent
application is now pending before a PTO Examiner in which
the applicant has sought to patent under the UPA a plant
falling within the scope of either the PPA or PVPA. The
Examiner reportedly was about to issue a final rejection on
the grounds that applicant's claims were drawn to non-stat-
utory subject matter under UPA Section 101.
C. A Rational Basis for Concluding That Human-
Modified Plants Are Patentable Subject Matter Under
the UPA
Not surprisingly, the legislative histories of the PPA
and PVPA shed no light on the question of whether these
statutes were intended to be the exclusive means of pro-
tecting plants, as now contended by the PTO. There simply
was no need for Congress even to consider this point when
they were enacted because of the early decisions holding
that plants were non-patentable subject matter under the
UPA. Absent clarifying legislative history, the question of
whether the PPA and PVPA should be the exclusive forms
18 Interestingly, a number of patents covering "plants, or parts of plants" issued
before this policy was crystalized. See U.S. Patent No. 4,378,655, issued April 5,
1983 (claims drawn to a semi-dwarf hybrid sunflower seed); No. 4,377,921, issued
March 29, 1983 (a gymnosperm clone produced by a specified process); No.
4,351,130, September 28, 1982 (a recessive tall rice plant); No. 4,368,592, January
18, 1983 (a method of obtaining dominant semi-dwarf maize seeds).

227
May 1985, Vol. 67, No. 5
of protection can only be resolved by resort to general prin-
ciples of statutory construction. The following three such
principles are pertinent to this question:
Principle 1: Where one statute deals with a subject in
general terms (here the UPA) and another statute deals with
the same subject in a more detailed way (here either the
PPA or PVPA), the two should be harmonized, if possible.
This principle was succinctly expressed by the Supreme
Court in Morton v. Mancari, 417 U.S. 535, 551 (1974):
The courts are not at liberty to pick and choose among congres-
sional enactments, and when two statutes are capable of co-exis-
tence, it is the duty of the courts, absent a clearly expressed
congressional intention to the contrary, to regard each as effective.
Principle 2: As a corollary to the first principle, if there
is any conflict between the general statute and the specific
statute, the latter will prevail, regardless of whether it was
passed before or after the general statute, unless it is clear
that the legislature intended to make the general statute
controlling. Preiser v. Rodriguez, 411 U.S. 475, 489 (1973);
C. Sands, Sutherland and Statutory Construction, 51.05 at
499 (4th ed. 1984).'9
Principle 3: In apparent contradiction to the first two
principles, some cases have held that a specific statute gov-
erns a general statute covering the same subject matter,

19 The following additional cases support Principles 1 and 2: United States v.


Borden Co., 308 U.S. 188, 198 (1939) ("When there are two acts upon the same
subject, the rule is to give effect to both if possible."); In re Bergy, 596 F.2d 952,
980 (C.C.P.A. 1979); Tennessee Gas Pipeline Co. v. Federal Energy Regulatory
Comm' n, 626 F.2d 1020 (D.C. Cir. 1980); Lashlee v. Sumner, 570 F.2d 107 (6th
Cir. 1978); Abell v. United States, 518 F.2d 1369 (Ct. Cl. 1975), cert. denied, 429
U.S. 817 (1976); Regional Rail Reorganization Act Cases, 419 U.S. 102 (1974);
United States v. Bates, 429 F.2d 557 (9th Cir. 1970); Central Commercial Co. v.
Commissioner of Internal Revenue, 337 F.2d 387 (7th Cir. 1964); General Dynamics
Corp. v. United States, 324 F.2d 971 (Ct. Cl. 1963); Tibke v. Immigration and
Naturalization Service, 335 F.2d 42 (2d Cir. 1964); Panama Canal Company v.
Anderson, 312 F.2d 98 (5th Cir.), cert. denied, 375 U.S. 832 (1963); United States
v. C.F. Industries, Inc., 542 F.Supp. 952 (D. Minn. 1982); Davis v. Devine, 554
F.Supp. 1165 (W.D. Mich. 1983), aff d, 736 F.2d 1108 (6th Cir.), cert. denied, 105
S. Ct. 436 (1984). See also 2 A. Sutherland Statutory Construction, supra, 51.05
at 499 ("General and special acts may be in pari materia. If so, they should be
construed together.").

228
Journal of the Patent and Trademark Office Society
apparently regardless of whether or not the two can be
harmonized."
While there is no clearly discernible way to distinguish
the facts of the cases applying Principle 3 from those apply-
ing Principles 1 and 2, the weight of authority in terms of
the number of decided cases and their more recent vintage'
suggests that the majority of courts have opted to apply
Principles 1 and 2. Moreover, the U.S. Court of Appeals for
the Federal Circuit, which ultimately will decide whether or
not human-modified plants are patentable subject matter,
recently acknowledged the propriety of Principle 1 in Roche
Products, lnc. v. Bolar Pharmaceutical Co., 733 F.2d 858,
864 (Fed. Cir.), cert. denied, 105 S. Ct 183 (1984). Assuming
the Federal Circuit would do the same here, the key question
is whether there would be any conflict if plants were deemed
patentable subject matter under both the UPA and the PPA
or PVPA, i.e., could these statutes be harmonized under
such circumstances?
The cases dealing with Principles 1 and 2 cover a wide
variety of factual circumstances and provide no clear cut
basis for determining when a court will apply the specific
statute to the exclusion of the general statute. Nevertheless,
one point which consistently emerges is that if the specific
and general statutes can be applied simultaneously, there is
no cognizable conflict and both statutes will apply. For
example, in the Regional Rail Reorganization Act Cases,
419 U.S. 102 (1974), the question presented was whether
plaintiff's damages were limited by the Regional Rail Reor-
ganization Act of 1973, 45 U.S.C. 701, et seq., which only
authorized funds specifically provided by Congress for use
in managing rail properties, or whether plaintiffs could recover
their full damages under the Tucker Act, 28 U.S.C. 1491,
which provided that damages could be obtained by a private
party against the government in a suit brought in the Court
of Claims. In concluding that the more specific Rail Act did

20 Ginsburg & Sons, Inc. v. Popkin, 285 U.S. 204, 208 (1932) ("specific terms
prevail over the general in the same or another statute which otherwise might be
controlling"); Fourco Glass Co. v. Transmirra Corp., 353 U.S. 222,228-29 (1957);
United States v. Aquino, 338 F.Supp. 1080 (E.D. Mich. 1972).
21 See footnote 16.

229
May 1985, Vol. 67, No. 5
not preclude the remedies provided by the more general
Tucker Act, the Supreme Court explained that "[Once the
Tucker Act and the Rail Act are 'capable of coexistence it
is the duty of the courts, absent a clearly expressed Congres-
sional intention to the contrary, to regard each as effec-
tive.' "22 As explained below, there are compelling reasons
for concluding that the UPA and PPA, on the one hand, and
the UPA and PVPA, on the other hand, can be applied
simultaneously to plants.
1. The Pertinent Analogy Between the Utility Patent
Act and the Design Patent Act
Although no court has addressed the question of whether
plants may be patented simultaneously under both the UPA
and PPA or PVPA, several courts have considered the anal-
ogous question of whether patents may be obtained on the
same invention under the UPA and the design patent statute
("DPA"), 35 U.S.C. 171-73.23 Pursuant to Section 171, a
design patent is issued on the "ornamental design" of an
"article of manufacture." A design patent may contain only
one claim which must be drawn to the ornamental design of
the article "as shown" or "as shown or described" in the
specification." Section 173 provides that a design patent is
granted for a term of fourteen years, as opposed to seventeen
years for a utility patent.
The validity of this analogy is demonstrated by two
facts. First, the subject matters covered by the DPA, PPA
and PVPA overlap to varying degrees with the subject matter
covered by the UPA. An overlap exists between the UPA
and DPA because the UPA protects the claimed article
22 Quoting from Morton v. Mancari, supra, 417 U.S. 535; see also Tibke v.
Immigration and Naturalization Service, 335 F.2d 42 (2d Cir. 1964).
23 The first design patent statute was enacted in 1842, ch. 263, 2, 5 stat. 543.
It was subsequently merged with the utility patent law in the Consolidated Patent
Act of 1870, ch. 230 71-76, 16 Stat. 198.
24 The single-claim requirement is not set forth in the statute but has been
imposed judicially. See In re Rubenfield, 270 F.2d 391 (C.C.P.A. 1959), cert.
denied, 362 U.S. 903 (1960). It has also been ruled that Section 103 of the UPA
"applies with equal force to a determination of the obviousness of either a design
or a utility patent." Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1441
(Fed. Cir. 1984).

230
Journal of the Patent and Trademark Office Society
of manufacture while the DPA protects the article of man-
ufacture embodying the claimed ornamental configuration.
This overlap is perhaps best illustrated when the same fea-
ture of a device constituting the novel utilitarian aspect also
produces the unique ornamental appearance. 25 Similarly,
overlaps would exist between the UPA and PPA or PVPA
because the article itself (i.e., the human-modified plant)
would be the subject matter for which protection is sought.
It should be noted, however, that like the DPA, the subject
matters covered by the PPA and PVPA would not be totally
subsumed by the UPA." The significance of this fact is that
if plants were deemed patentable subject matter under the
UPA, the PPA and PVPA would still be needed to protect
plants outside the scope of the UPA but within the scope of
those two statutes.'
Second, the legislative history of the DPA, as with the
PPA and PVPA, says nothing about whether it was meant
to be the exclusive form of protection when such an overlap
exists.28
In a number of decisions the courts have delineated the
circumstances under which both UPA and DPA patents may
be obtained on the same or a closely related invention. The
25 See In re Thorington, 418 F.2d 528, 537 (C.C.P.A. 1969), cert. denied, 362
U.S. 903 (1960); In re Hargraves, 53 F.2d 900 (C.C.P.A. 1931) (utility patent
application claiming a novel tire tread design rejected over applicant's design patent
claiming the ornamental design of the same tire).
26 For example, there is no utility requirement under either the PPA or PVPA.
(See Yoder Bros., Inc. v. California-Florida Plan Corp., supra, 537 F.2d at 1377,
where the court observed that the requirement of distinctness under the PPA
"replaces" that of utility under the UPA.) Hence a "distinct and new" asexually
reproduced plant variety having no "utility" (defined under the UPA to mean that
the invention is capable of some beneficial use, Bedford v. Hunt, 3 F. Cas. 37 (No.
1217) (CC. Mass. 1817)) would be patentable subject matter under the PPA and a
"novel" sexually reproduced plant variety having no utility would be patentable
subject matter under the PVPA, but neither would be patentable subject matter
under UPA Section 101. As another example, "newly found seedlings" expressly
are made patentable under the PPA, but would be unpatentable subject matter
under UPA Section 101 because, unmodified in any way by the hand of man, they
would be nothing more than a "product of nature."
27 As explained below, another reason for having the PPA and PVPA co-exist
simultaneously with the UPA is to give an applicant options on the extent of
disclosure needed in a patent applicationless for a PPA or PVPA patent and
more for a UPA patent.
28 See S. Rep. No. 1139, 57th Cong., 1st Sess. (April 15, 1902).
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May 1955, Vol. 67, No. 5
following points gleaned from these cases are pertinent to
the question of whether there is any conflict between the
UPA and the PPA or PVPA:
1. There is no statutory basis for precluding issuance
of both a utility patent and a design patent on the same
invention.' Instead, as explained in In re Thorington, supra,
the courts have fashioned a doctrine precluding such "double
patenting" on the same invention, based upon the theory that
a patentee should not be permitted to extend the term of his
patent "monopoly.""
2. The test used in determining whether a utility patent
and a design patent cover the "same invention," and hence
whether they may not simultaneously co-exist, is: Do the
two patents "cross read," a term defined in Wahl v. Rex-
nord, Inc., 624 F.2d 1169, 1179 (3d Cir. 1980) as follows:
To say that patents cross-read means that a device embodying the
patentable design of the design patent must infringe the utility
patent; and that a device embodying the patentable claims of the
utility patent must infringe the design patent. [Emphasis in origi-
nal]. 31
Utility-design double patenting may also be found if the
subject matter of the claims of one patent "would have been
obvious from the subject matter of the claims of the other
patent, and vice versa.""
3. In the utility-utility patent context a "terminal
disclaimer"" may not be used to overcome "same inven-
29 In contrast, there is a statutory basis for precluding issuance of two utility
patents on the same invention, namely, Section 101 of the UPA which provides
that an inventor "may obtain a patent" on his invention.
30 See In re Swett, 451 F.2d 631, 635 (C.C.P.A. 1971); Transmatic, Inc. v.
Gulton Industries, Inc., 601 F.2d 904, 909 (6th Cir. 1979); Carman Industries, Inc.
v. Wahl, 724 F.2d 932, 940 (Fed. Cir. 1983); Wahl v. Rexnord, Inc., 624 F.2d 1169
(3d Cir. 1980).
31 Accord Carman Industries, Inc. v. Wahl, 724 F.2d 932 (Fed. Cir. 1983). As
explained by Professor Chisum, "[d]ouble patenting is concerned with attempts
to claim the same or related subject matter twice. Thus, the standard for compar-
ison for the second patent is what was claimed in the first patent." D. Chisum, 3
Patents 9.03[1] (1984).
32 Carman Industries, Inc. v. Wahl, supra, 724 F.2d at 940.
33 Under 35 U.S.C. 253, a patent applicant or patentee may disclaim the terminal
portion of his patent term. By filing such a "terminal disclaimer," the applicant or
patentee concedes that both patents will terminate on the same date.

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Lion" double patenting but may be used to overcome


"obviousness" double patenting." The justification for this
distinction is that the former is statutorily mandated by UPA
Section 101, while the latter is judicially mandated based
upon the theory that a patentee should not be permitted to
extend the term of his patent "monopoly." Since utility-
design double patenting was judicially mandated for both
"same invention" and "obviousness" double patenting, a
terminal disclaimer should be able to overcome any type of
utility-design double patenting. This issue, however, has not
yet been resolved by the courts."
Several conclusions can be drawn from these three points.
First, and most importantly, the courts have recognized that
there is no inherent conflict between the UPA and DPA
which would dictate that one prevail over the other. Even
though the subject matters covered by these two statutes
overlap, the courts have fashioned rules facilitating their co-
existence and simultaneous co-application. Most notably, a
utility patent and a design patent may be obtained on the
same disclosed invention, provided that neither patent claims
the same subject matter or an obvious variation thereof.
Second, even if a utility and a design patent claim obvious
variations of one another, the two may co-exist by filing a
terminal disclaimer. Moreover, even if a design and a utility
patent claim the same invention, double patenting should
be avoidable by filing a terminal disclaimer, although as
noted above, this possibility has not yet been considered by
the courts.
Third, even though the subject matters of the UPA and
DPA overlap, no conflict between these statutes is perceived
when an inventor elects to file only one patent application
for either a utility patent or a design patent. For example, if
the applicant in In re Hargraves, supra, had filed only a
utility patent application on his novel tire tread design, there
is no doubt that a utility patent would issue, notwithstanding
the fact that the novel features also were protectable under
the DPA.

34 In re Vogel, 422 F.2d 438, 441 (C.C.P.A. 1970).


35 See In re Thorington, supra, at 418 F.2d 537, n. 9.

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