In re Walter F. Beineke — The Mighty Oak That Couldn’t Be Patented

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

While most people are familiar with patents for inventions, many do not realize that an individual can obtain a patent on new kinds of plants. In In re Walter F. Beineke, the Federal Circuit had to address what kinds of plants (in this case, trees) are eligible for patent protection. In a unanimous decision authored by Circuit Judge Dyk, the Court concluded that the applicant (Walter Beineke) was not entitled to a patent for white oak trees he discovered.

Beineke, a Professor Emeritus of Forestry and Natural Resources at Purdue University, discovered two large, hundred-year-old white oak trees in another’s front yard that appeared to display superior genetic traits than those of other white oaks (excellent timber quality and a strong central stem tendency). Beineke planted acorns from each of the trees and confirmed the superior traits of the trees. After years of studying these trees, he applied for plant patents on both trees.

The United States Patent and Trademark Office rejected his applications, finding that the trees were found in an uncultivated state, which was affirmed by the Board of Patent Appeals and Interferences, finding that there was no evidence that the trees had been planted by a person. Beineke appealed, and the Federal Circuit affirmed the rejections, although for a slightly different reason.

The case centered around the proper interpretation of 35 U.S.C. § 161, which allows the Patent Office to issue plant patents to anyone who:

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 propagated plant or a plant found in an uncultivated state . . . .

The question was what level of human involvement is necessary to obtain a plant patent. Beineke argued that no human involvement is necessary, while the Patent Office argued that humans must play some role in the creation of the plant.

The Federal Circuit traced the history of the Patent Act, starting with the 1930 Act, which allowed plant patents.  The Court noted that the statute and the courts applying it recognized that plant patents could not be granted for simply discovering a plant. There had to be some “exercise of the inventive faculty.”

In short, the provisions of the original 1930 Act, incorporated in the present plant patent statute, provided patent protection to only those plants (e.g., sports, mutants, and hybrids) 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 Court then considered what effect, if any, the 1954 amendments had on the Plant Patent Act. One of the primary purposes of the amendments was to overrule a prior court decision and allow plant patents for newly found seedlings that were the result of human activity.

Taking all of this together, the Court found that Beineke was not entitled to a plant patent on either white oak tree. The Court concluded that Beineke discovered the white oaks by chance and that he could not demonstrate that the trees were the result of his (or anyone else’s) creative efforts. Given that the trees were over 100 years old when Beineke found them, they were also not “newly found seedlings” within the scope of the 1954 amendments.

Having made these determinations, the Court declined to address what is meant by “found in an uncultivated state” for purposes of § 161, leaving that question for another day and another case.

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