In November, Walter Beineke petitioned the Supreme Court for review of a Federal Circuit decision affirming the rejection of two plant patents on tree varieties that he discovered as not patent-eligible. This month, the PTO responded to Mr. Beineke’s petition. Oddly, despite its position that the case does not warrant the Supreme Court’s intervention, the PTO admitted that the Federal Circuit’s decision conflicts with prior case law on plant patent eligibility. This issue, and the fact that plant patent cases only rarely receive appellate review, make Beineke v. Kappos an interesting case to follow.

BACKGROUND -

Unlike the eligibility requirements for utility patents, 35 U.S.C. § 161 provides that “[w]hoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings” may be eligible for a plant patent. In this case, Mr. Beineke observed two 100 year-old white oak trees that appeared to have superior genetic traits, including excellent timber quality and strong central stem tendency. To confirm the existence of these traits, Mr. Beineke planted acorns from each of the trees and, over the next few years, observed the progeny trees. After observing the same superior traits in the progeny trees, he asexually reproduced the trees. When the asexually reproduced trees ran “true to type”— meaning they showed the same traits — Mr. Beineke concluded that he had discovered two new and distinct varieties and applied for plant patents on both trees.