In re Beineke
690 F.3d 1344 (2012)
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Rule of Law:
To be eligible for a plant patent under 35 U.S.C. § 161, a plant must be the result of human inventive activity, such as plant breeding. The sole exception to this rule is for 'newly found seedlings' discovered in a cultivated state; mature, naturally occurring plants are unpatentable products of nature, regardless of where they are found.
Facts:
- In the fall of 1980, Walter F. Beineke noticed two white oak trees (AFTO-2 and AFTO-3) in the front yard of a private residence.
- At the time of discovery, the trees were approximately 118 and 105 years old, respectively, and displayed superior genetic traits.
- There was no evidence that human activity contributed to the creation of the trees or that specific efforts were made to cultivate the trees themselves after they began to grow.
- The land where the trees grew was a wooded pasture until a house was built around 1930, long after the trees had started growing.
- After observing that acorns from the trees produced progeny with the same superior traits, Beineke asexually reproduced the original two trees.
- The asexually reproduced trees ran true to the originally discovered trees.
Procedural Posture:
- Walter F. Beineke filed two plant patent applications with the U.S. Patent and Trademark Office (PTO).
- The patent examiner rejected both applications on the grounds that the trees were 'found in an uncultivated state.'
- Beineke appealed the examiner's decision to the Board of Patent Appeals and Interferences ('Board'), an administrative court within the PTO.
- A divided Board affirmed the examiner's rejections.
- Beineke filed a request for continued examination and submitted additional evidence.
- The examiner again issued final rejections for both applications.
- Beineke again appealed to the Board.
- An enlarged panel of the Board affirmed the rejections.
- Beineke (appellant) appealed the Board's final decisions to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a mature, naturally occurring tree that an applicant discovers, recognizes as unique, and asexually reproduces qualify for a plant patent under 35 U.S.C. § 161, when the applicant did not contribute to the tree's creation and it was not a 'newly found seedling'?
Opinions:
Majority - Dyk, Circuit Judge
No. A mature, naturally occurring tree does not qualify for a plant patent because 35 U.S.C. § 161 requires that a plant be the product of human invention, with a narrow exception only for 'newly found seedlings' found in a cultivated state. The court reasoned that the original 1930 Plant Patent Act incorporated the established patent principle that an 'invention or discovery' requires an exercise of the inventive faculty, not merely finding a product of nature. Legislative history shows Congress intended to reward plant breeders for their creative efforts, not plant explorers for 'chance finds,' and specifically rejected language that would have permitted patenting a 'thing already existing.' The 1954 amendments only extended patentability to 'newly found seedlings' discovered on cultivated land to overrule a prior case, but did not alter the fundamental requirement that other plants, like the mature trees here, must be the result of human effort. Because Beineke did not contribute to the trees' creation and they were not 'newly found seedlings,' they are unpatentable products of nature under the precedent of cases like Diamond v. Chakrabarty.
Analysis:
This decision significantly clarifies the scope of the 'discovery' prong of the Plant Patent Act, reinforcing the product of nature doctrine within this area of intellectual property. By narrowly interpreting the 1954 amendments, the court effectively foreclosed the patenting of mature, naturally occurring plants, even if found on cultivated land. The ruling solidifies the requirement of human ingenuity or intervention for plant patentability, forcing future applicants who did not breed a plant to prove that their discovery fits into the very specific 'newly found seedling' category. This holding draws a bright line between patentable human-made inventions and unpatentable discoveries of nature's handiwork.
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