J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.

Background

Pioneer Hi‑Bred holds utility patents on inbred and hybrid corn seeds and had about seventeen such patents at issue. Farm Advantage bought and resold bags of Pioneer’s patented hybrid seed that bore a limited license and was sued by Pioneer for patent infringement. Farm Advantage counterclaimed that sexually reproducing plants cannot be patented under the general patent law and that the Plant Patent Act (PPA) and Plant Variety Protection Act (PVPA) are the exclusive ways to protect plants.

Reasoning

The Court examined whether the general federal patent statute covers plants. Relying on the Court’s earlier broad reading of the patent law in Diamond v. Chakrabarty, the majority concluded that the language of the general patent statute can include plants. The Court found nothing in the PPA or PVPA that clearly removes plants from the general patent statute. It emphasized that the two plant‑specific laws have different, narrower requirements and exemptions and can coexist with utility patent coverage. The Court also noted longstanding PTO practice issuing plant utility patents and that Congress had not acted to forbid that practice.

Real world impact

The ruling affirms that companies can obtain and enforce utility patents on plants and seeds. Utility patents give broader exclusionary rights than PVPA certificates and do not include PVPA exemptions such as seed‑saving or certain research uses. The decision therefore strengthens the ability of patent holders to control reproduction and commercial use of patented plant varieties.

Dissents or concurrances

Justice Scalia concurred, agreeing with the outcome based on interpretive canons. Justice Breyer (joined by Justice Stevens) dissented, arguing the plant statutes showed Congress intended to exclude such plant varieties from the general patent statute.