OCTOBER TERM, 2001
Syllabus
J. E. M. AG SUPPLY, INC., DBA FARM ADVANTAGE, INC., ET AL. v.
PIONEER HI-BRED INTERNATIONAL, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL
CIRCUIT
No. 99-1996. Argued October 3, 200l-Decided December 10,2001
Respondent Pioneer Hi-Bred International, Inc. (Pioneer), holds
17 utility patents issued under 35 U. S. C. § 101 that cover the
manufacture, use, sale, and offer for sale of its inbred and hybrid
corn seed products. Pioneer sells its patented hybrid seeds under a
limited label license that allows only the production of grain
and/or forage, and prohibits using such seed for propagation or
seed multiplication or for the production or development of a
hybrid or different seed variety. Petitioner J. E. M. Ag Supply,
Inc., doing business as Farm Advantage, Inc., bought patented seeds
from Pioneer in bags bearing the license agreement and then resold
the bags. Pioneer filed this patent infringement suit against Farm
Advantage and distributors and customers of Farm Advantage
(collectively Farm Advantage or petitioners). Farm Advantage filed
a patent invalidity counterclaim, arguing that sexually reproducing
plants, such as Pioneer's corn plants, are not patentable subject
matter within § 101. Farm Advantage maintained that the Plant
Patent Act of 1930 (PPA) and the Plant Variety Protection Act
(PVPA) set forth the exclusive statutory means for protecting plant
life because these statutes are more specific than § 101, and thus
each carves out subject matter from § 101 for special treatment.
The District Court granted Pioneer summary judgment. Relying on
this Court's broad construction of § 101 in Diamond v. Chakrabarty,
447 U. S. 303,
the District Court held that § 101 clearly covers plant life. It
also held that in enacting the PPA and the PVPA, Congress neither
expressly nor implicitly removed plants from § WI's subject matter.
In particular, the District Court noted that Congress did not
implicitly repeal § 101 by passing the more specific PVPA because
there was no irreconcilable conflict between the two statutes. The
Federal Circuit affirmed.
Held: Newly developed plant breeds fall within the subject
matter of § 101, and neither the PPA nor the PVPA limits the scope
of § WI's coverage. Pp. 130-146.
(a) In approaching the question presented here, this Court is
mindful that it has already recognized that § WI's language is
extremely broad and has concluded that living things are patentable
under that provision,
125
Chakrabarty, supra, at 308, 313, 315. Since 1985, the Patent and
Trademark Office (PTO) has had an unbroken practice of conferring
utility patents for plants. Nonetheless, petitioners argue that the
PPA and the PVPA are the exclusive means of protecting new
varieties of plants, and so awarding utility patents for plants
upsets the scheme contemplated by Congress. Pp. 130-132.
(b) Neither the PPA's original nor its recodified text indicates
that its protection for asexually reproduced plants was intended to
be exclusive. The 1930 PPA amended the general patent provision to
protect only the asexual reproduction of a plant. And Congress'
1952 revision, which placed plant patents into a separate chapter
15, was only a housekeeping measure that did not change the
substantive rights or the relaxed requirements for such patents.
Plant patents under the PPA thus continue to have very limited
coverage and less stringent requirements than § 101 utility
patents. Importantly, chapter 15 nowhere states that plant patents
are the exclusive means of granting intellectual property
protection to plants. The arguments that petitioners advance for
why the PPA should preclude assigning utility patents for plants
are unpersuasive because petitioners fail to take account of the
forward-looking perspective of the utility patent statute and the
reality of plant breeding in 1930. Pp. 132-138.
(c) That the PVPA specifically authorizes limited patent-like
protection for certain sexually reproduced plants does not evidence
Congress' intent to deny broader § 101 utility patent protection
for such plants. While the PVPA creates a comprehensive statutory
scheme with respect to its particular protections and subject
matter, giving limited protection to plant varieties that are new,
distinct, uniform, and stable, nowhere does it restrict the scope
of patentable subject matter under § 101. The PVPA contains no
statement of exclusivity. Furthermore, at the time the PVP A was
enacted, the PTO had already issued numerous utility patents for
hybrid plant processes, which reaffirms that such material was
within § WI's scope. Petitioners also err in arguing that the PVPA
altered § WI's subject-matter coverage by implication. Repeal by
implication requires that the earlier and later statutes be
irreconcilable, Morton v. Mancari,
417 U. S. 535, 550. The
differences in the requirements for, and coverage of, utility
patents and PVPA plant variety certificates, however, do not
present irreconcilable conflicts because the requirements for a §
101 utility patent are more stringent than those for a PVP
certificate, and the protections afforded by a utility patent are
greater than those afforded by a PVP certificate. Petitioners'
suggestion that dual protection cannot exist when statutes overlap
and purport to protect the same commercially valuable attribute or
thing is rejected as well. This Court has given effect to two
over-
126
Syllabus
lapping statutes, so long as each reaches some distinct cases,
see Connecticut Nat. Bank v. Germain,
503 U. S. 249, 253, and
it has allowed dual protection in other intellectual property
cases, see, e. g., Kewanee Oil Co. v. Bicron Corp.,
416 U. S. 470, 484. In
this case, many plant varieties that are unable to satisfy § 101's
stringent requirements might still qualify for the PVPA's lesser
protections. Pp. 138-144.
(d) The PTO has assigned utility patents for plants for at least
16 years, and there has been no indication from either Congress or
agencies with expertise that such coverage is inconsistent with the
PVPA or the PPA. Congress has not only failed to pass legislation
indicating that it disagrees with the PTO's interpretation of §
101; it has even recognized the availability of utility patents for
plants. Pp. 144-145.
200 F.3d
1374, affirmed.
THOMAS, J., delivered the opinion of the Court, in which
REHNQUIST, C. J., and SCALIA, KENNEDY, SOUTER, and GINSBURG, JJ.,
joined. SCALIA, J., filed a concurring opinion, post, p. 146.
BREYER, J., filed a dissenting opinion, in which STEVENS, J.,
joined, post, p. 147. O'CONNOR, J., took no part in the
consideration or decision of the case.
Bruce E. Johnson argued the cause for petitioners. With him on
the briefs was S. P.DeVolder.
Edmund
J. Sease argued the cause for respondent. With him
on the brief were Herbert H. Jervis, Daniel
J. Cosgrove, and
Richard G. Taranto.
Deputy Solicitor General Wallace argued the cause for the United
States as amicus curiae urging affirmance. With him on the brief
were Solicitor General Olson, Acting Assistant Attorney General
Schiffer, Austin C. Schlick, Barbara Biddle, Alfred Mollin, John M.
Whealan, Bruce
J. Chasan, Stephen Walsh, and James Michael
Kelly.
*
*Briefs of amici curiae urging reversal were filed for the
American Corn Growers Association et al. by Joseph Mendelson III;
and for Malla Pollack, pro se, et al.
Briefs of amici curiae urging affirmance were filed for the
American Bar Association by Martha W Barnett and Reid G. Adler; for
the American Crop Protection Association by David L. Kelleher; for
the American Intellectual Property Law Association by Robert L.
Baechtold and Warren D. Woessner; for the American Seed Trade
Association by Gary Jay Kushner; for the Biotechnology Industry
Organization by Jeffrey P. Ku-
127
JUSTICE THOMAS delivered the opinion of the Court.
This case presents the question whether utility patents may be
issued for plants under 35 U. S. C. § 101 (1994 ed.), or whether
the Plant Variety Protection Act, 84 Stat. 1542, as amended, 7 U.
S. C. § 2321 et seq., and the Plant Patent Act of 1930, 35 U. S. C.
§§ 161-164 (1994 ed. and Supp. V), are the exclusive means of
obtaining a federal statutory right to exclude others from
reproducing, selling, or using plants or plant varieties. We hold
that utility patents may be issued for plants.
I
The United States Patent and Trademark Office (PTO) has issued
some 1,800 utility patents for plants, plant parts, and seeds
pursuant to 35 U. S. C. § 101. Seventeen of these patents are held
by respondent Pioneer Hi-Bred International, Inc. (Pioneer).
Pioneer's patents cover the manufacture, use, sale, and offer for
sale of the company's inbred and hybrid corn seed products. A
patent for an inbred corn line protects both the seeds and plants
of the inbred line and the hybrids produced by crossing the
protected inbred line with another corn line. See, e.
g., U.
S. Patent No. 5,506,367, col. 3, App. 42. A hybrid plant patent
protects the plant, its seeds, variants, mutants, and trivial
modifications of the hybrid. See U. S. Patent No. 5,491,295, cols.
2-3,
id., at 29-30.
Pedigree inbred corn plants are developed by crossing corn
plants with desirable characteristics and then inbreeding the
resulting plants for several generations until the resulting plant
line is homogenous. Inbreds are often weak
shan, Marinn F. Carlson, and Stephan E. Lawton; for Cargill,
Inc., by Frank P. Porcelli, Michael E. Florey, Richard
J.
Anderson, Jonathan E. Singer, John A. Dragseth, Timothy S. Bishop,
and Thomas B. Nachbar; for the Delta and Pine Land Co. by Shawn N.
Sullivan; for the Monsanto Co. by Richard L. Stanley; and for the
Washington Legal Foundation et al. by Daniel
J. Popeo and R.
Shawn Gunnarson.
Thomas E. Friebel filed a brief for BASF Corp. as amicus
curiae.
128
and have a low yield; their value lies primarily in their use
for making hybrids. See, e.
g., U. S. Patent No. 5,506,367,
col. 6,
id., at 43 (describing the traits and applications
of the inbred corn line PHP38 by reference to the qualities
exhibited in hybrid plants created with PHP38).
Hybrid seeds are produced by crossing two inbred corn plants and
are especially valuable because they produce strong and vibrant
hybrid plants with selected highly desirable characteristics. For
instance, Pioneer's hybrid corn plant 3394 is "characterized by
superior yield for maturity, excellent seedling vigor, very good
roots and stalks, and exceptional stay green." U. S. Patent No.
5,491,295, cols. 2-3,
id., at 29-30. Hybrid plants, however,
generally do not reproduce true-to-type, i. e., seeds produced by a
hybrid plant do not reliably yield plants with the same hybrid
characteristics. Thus, a farmer who wishes to continue growing
hybrid plants generally needs to buy more hybrid seed.
Pioneer sells its patented hybrid seeds under a limited label
license that provides: "License is granted solely to produce grain
and/or forage." Id., at 51. The license "does not extend to the use
of seed from such crop or the progeny thereof for propagation or
seed multiplication." Ibid. It strictly prohibits "the use of such
seed or the progeny thereof for propagation or seed multiplication
or for production or development of a hybrid or different variety
of seed." Ibid.
Petitioner J. E. M. Ag Supply, Inc., doing business as Farm
Advantage, Inc., purchased patented hybrid seeds from Pioneer in
bags bearing this license agreement. Although not a licensed sales
representative of Pioneer, Farm Advantage resold these bags.
Pioneer subsequently brought a complaint for patent infringement
against Farm Advantage and several other corporations and residents
of the State of Iowa who are distributors and customers for Farm
Advantage (referred to collectively as Farm Advantage or
petitioners). Pioneer alleged that Farm Advantage has "for a
long-time
129
past been and still [is] infringing one or more [Pioneer
patents] by making, using, selling, or offering for sale corn seed
of the ... hybrids in infringement of these patents-in-suit." Id.,
at 10.
Farm Advantage answered with a general denial of patent
infringement and entered a counterclaim of patent invalidity,
arguing that patents that purport to confer protection for corn
plants are invalid because sexually reproducing plants are not
patentable subject matter within the scope of 35 U. S. C. § 101
(1994 ed.). App. 12-13, 17. Farm Advantage maintained that the
Plant Patent Act of 1930 (PP A) and the Plant Variety Protection
Act (PVPA) set forth the exclusive statutory means for the
protection of plant life because these statutes are more specific
than § 101, and thus each carves out subject matter from § 101 for
special treatment.1
The District Court granted summary judgment to Pioneer.
Relying on this Court's broad construction of § 101 in Diamond
v. Chakrabarty,
447
U. S. 303 (1980), the District Court held that the subject
matter covered by § 101 clearly includes plant life. 49 USPQ 2d
1813, 1817 (ND Iowa 1998). It further concluded that in enacting
the PP A and the PVP A Congress neither expressly nor implicitly
removed plants from § 101's subject matter. Id., at 1819. In
particular, the District Court noted that Congress did not
implicitly repeal § 101 by passing the more specific PVPA because
there was no irreconcilable conflict between the PVPA and § 101.
Id., at 1821.
The United States Court of Appeals for the Federal Circuit
affirmed the judgment and reasoning of the District
1 Petitioners favor a holding that the PVPA is the only means of
protecting these corn plants primarily because the PVPA's coverage
is generally less extensive and the hybrid seeds at issue do not
have PVPA protection. App. 14. Most notably, the PVPA provides
exemptions for research and for farmers to save seed from their
crops for replanting. See infra, at 140. Utility patents issued for
plants do not contain such exemptions.
130
Court.
200 F.3d
1374 (2000). We granted certiorari, 531 U. S. 1143 (2001), and
now affirm.
II
The question before us is whether utility patents may be issued
for plants pursuant to 35 U. S. C. § 101 (1994 ed.). The text of §
101 provides:
"Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title."
As this Court recognized over 20 years ago in Chakrabarty, 447
U. S., at 308, the language of § 101 is extremely broad. "In
choosing such expansive terms as 'manufacture' and 'composition of
matter,' modified by the comprehensive 'any,' Congress plainly
contemplated that the patent laws would be given wide scope." Ibid.
This Court thus concluded in Chakrabarty that living things were
patentable under § 101, and held that a manmade micro-organism fell
within the scope of the statute. As Congress recognized, "the
relevant distinction was not between living and inanimate things,
but between products of nature, whether living or not, and
human-made inventions." Id., at 313.
In Chakrabarty, the Court also rejected the argument that
Congress must expressly authorize protection for new patentable
subject matter:
"It is, of course, correct that Congress, not the courts, must
define the limits of patentability; but it is equally true that
once Congress has spoken it is 'the province and duty of the
judicial department to say what the law is.' Marbury v. Madison, 1
Cranch 137, 177 (1803). Congress has performed its constitutional
role in defining patentable subject matter in § 101; we perform
ours in construing the language Congress has em-
131
ployed .... The subject-matter provisions of the patent law have
been cast in broad terms to fulfill the constitutional and
statutory goal of promoting 'the Progress of Science and the useful
Arts' with all that means for the social and economic benefits
envisioned by Jefferson." Id., at 315.
Thus, in approaching the question presented by this case, we are
mindful that this Court has already spoken clearly concerning the
broad scope and applicability of § 101.2
Several years after Chakrabarty, the PTO Board of Patent Appeals
and Interferences held that plants were within the understood
meaning of "manufacture" or "composition of matter" and therefore
were within the subject matter of § 101. In re Hibberd, 227 USPQ
443, 444 (1985). It has been the unbroken practice of the PTO since
that time to confer utility patents for plants. To obtain utility
patent protection, a plant breeder must show that the plant he has
developed is new, useful, and nonobvious. 35 U. S. C. §§ 101-103
(1994 ed. and Supp. V). In addition, the plant must meet the
specifications of § 112, which require a written description of the
plant and a deposit of seed that is publicly accessible. See 37 CFR
§§ 1.801-1.809 (2001).
Petitioners do not allege that Pioneer's patents are invalid for
failure to meet the requirements for a utility patent. Nor do they
dispute that plants otherwise fall within the terms of § 101's
broad language that includes "manufacture"
2JU8TICE BREYER argues that Diamond v. Chakrabarty,
447 U. S. 303, 315
(1980), cannot determine the outcome of this case because it did
not answer the precise question presented. See post, at 147-149
(dissenting opinion). But this simply misses the mark. Chakrabarty
broadly interpreted the reach of § 101. This interpretation is
surely germane to the question whether sexually reproduced plants
fall within the subject matter of § 101. In addition, Chakrabarty's
discussion of the PPA and the PVPA is relevant to petitioners'
primary arguments against utility patent protection for sexually
reproduced plants. See 447 U. S., at 310314; see also infra, at
134-135.
132
or "composition of matter." Rather, petitioners argue that the
PP A and the PVP A provide the exclusive means of protecting new
varieties of plants, and so awarding utility patents for plants
upsets the scheme contemplated by Congress. Brief for Petitioners
11. We disagree. Considering the two plant specific statutes in
turn, we find that neither forecloses utility patent coverage for
plants.
A
The 1930 PP A conferred patent protection to asexually
reproduced plants. Significantly, nothing within either the
original 1930 text of the statute or its recodified version in 1952
indicates that the PP A's protection for asexually reproduced
plants was intended to be exclusive.
Plants were first explicitly brought within the scope of patent
protection in 1930 when the PP A included "plants" among the useful
things subject to patents. Thus the 1930 PP A amended the general
utility patent provision, Rev. Stat. § 4886, to provide:
"Any person who has invented or discovered any new and useful
art, machine, manufacture, or composition of matter, or any new and
useful improvements thereof, or who has invented or discovered and
asexually reproduced any distinct and new variety of plant, other
than a tuber-propagated plant, not known or used by others in this
country, before his invention or discovery thereof, ... may ...
obtain a patent therefor." Act of May 23, 1930, § 1, 46 Stat.
376.
This provision limited protection to the asexual reproduction of
the plant. Asexual reproduction occurs by grafting, budding, or the
like, and produces an offspring with a genetic combination
identical to that of the single parent-essentially a clone.3 The
PPA also amended Revised Statutes
3 By contrast, sexual reproduction occurs by seed and sometimes
involves two different plants.
133
§ 4888 by adding: "No plant patent shall be declared invalid on
the ground of noncompliance with this section if the description is
made as complete as is reasonably possible." Id., § 2, 46 Stat.
376.
In 1952, Congress revised the patent statute and placed the
plant patents into a separate chapter 15 of Title 35 entitled,
"Patents for plants." 35 U. S. C. §§ 161-164.4 This was merely a
housekeeping measure that did nothing to change the substantive
rights or requirements for a plant patent. A "plant patent" 5
continued to provide only the exclusive right to asexually
reproduce a protected plant, § 163, and the description requirement
remained relaxed, § 162.6 Plant patents under the PPA thus have
very limited coverage and less stringent requirements than § 101
utility patents.
Importantly, chapter 15 nowhere states that plant patents are
the exclusive means of granting intellectual property protection to
plants. Although unable to point to any language that requires, or
even suggests, that Congress intended the PPA's protections to be
exclusive, petitioners advance three reasons why the PP A should
preclude assigning utility patents for plants. We find none of
these arguments to be persuasive.
4The PPA, as amended, provides: "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 propagated plant or a plant found in
an uncultivated state, may obtain a patent therefor, subject to the
conditions and requirements of this title." 35 U. S. C. § 161 (1994
ed.).
5 Patents issued under § 161 are referred to as "plant patents,"
which are distinguished from § 101 utility patents and § 171 design
patents.
6 To obtain a plant patent under § 161 a breeder must meet all
of the requirements for § 101, except for the description
requirement. See § 162 ("No plant patent shall be declared invalid
for noncompliance with section 112 [providing for written
description] of this title if the description is as complete as is
reasonably possible").
134
First, petitioners argue that plants were not covered by the
general utility patent statute prior to 1930. Brief for Petitioners
19 ("If the patent laws before 1930 allowed patents on 'plants'
then there would have been no reason for Congress to have passed
the 1930 PPA ... "). In advancing this argument, petitioners
overlook the state of patent law and plant breeding at the time of
the PP A's enactment. The Court in Chakrabarty explained the
realities of patent law and plant breeding at the time the PP A was
enacted: "Prior to 1930, two factors were thought to remove plants
from patent protection. The first was the belief that plants, even
those artificially bred, were products of nature for purposes of
the patent law .... The second obstacle to patent protection for
plants was the fact that plants were thought not amenable to the
'written description' requirement of the patent law." 447 U. S., at
311-312. Congress addressed these concerns with the 1930 PP A,
which recognized that the work of a plant breeder was a patentable
invention and relaxed the written description requirement. See §§
1-2,46 Stat. 376. The PPA thus gave patent protection to breeders
who were previously unable to overcome the obstacles described in
Chakrabarty.
This does not mean, however, that prior to 1930 plants could not
have fallen within the subject matter of § 10l. Rather, it
illustrates only that in 1930 Congress believed that plants were
not patentable under § 101, both because they were living things
and because in practice they could not meet the stringent
description requirement. Yet these premises were disproved over
time. As this Court held in Chakrabarty, "the relevant distinction"
for purposes of § 101 is not "between living and inanimate things,
but between products of nature, whether living or not, and
humanmade inventions." 447 U. S., at 313. In addition, advances in
biological knowledge and breeding expertise have allowed plant
breeders to satisfy § 101's demanding description requirement.
135
Whatever Congress may have believed about the state of patent
law and the science of plant breeding in 1930, plants have always
had the potential to fall within the general subject matter of §
101, which is a dynamic provision designed to encompass new and
unforeseen inventions. "A rule that unanticipated inventions are
without protection would conflict with the core concept of the
patent law that anticipation undermines patentability." Id., at
316.
Petitioners essentially ask us to deny utility patent protection
for sexually reproduced plants because it was unforeseen in 1930
that such plants could receive protection under § 101. Denying
patent protection under § 101 simply because such coverage was
thought technologically infeasible in 1930, however, would be
inconsistent with the forwardlooking perspective of the utility
patent statute. As we noted in Chakrabarty, "Congress employed
broad general language in drafting § 101 precisely because [new
types of] inventions are often unforeseeable." Ibid.
Second, petitioners maintain that the PP A's limitation to
asexually reproduced plants would make no sense if Congress
intended § 101 to authorize patents on plant varieties that were
sexually reproduced. But this limitation once again merely reflects
the reality of plant breeding in 1930. At that time, the primary
means of reproducing bred plants true-to-type was through asexual
reproduction. Congress thought that sexual reproduction through
seeds was not a stable way to maintain desirable bred
characteristics.7
7 The Senate Report accompanying the bill notes: "All such
plants must be asexually reproduced in order to have their identity
preserved. This is necessary since seedlings either of chance or
self-pollenization from any of these would not preserve the
character of the individuaL" S. Rep. No. 315, 71st Cong., 2d Sess.,
3 (1930).
This Report, like the text, indicates Congress' intent to limit
plant patent coverage to asexual reproduction, but explains that
this limitation "recognizes a practical situation" -i. e., that
propagation by seeds does not preserve the character of the
original. See
id., at 4 ("[T]he patent right granted is a
right to propagate the new variety by asexual
136
Thus, it is hardly surprising that plant patents would protect
only asexual reproduction, since this was the most reliable type of
reproduction for preserving the desirable characteristics of
breeding. See generally E. Sinnott, Botany Principles and Problems
266-267 (1935); J. Priestley & L. Scott, Introduction to Botany
530 (1938).
Furthermore, like other laws protecting intellectual property,
the plant patent provision must be understood in its proper
context. Until 1924, farmers received seed from the Government's
extensive free seed program that distributed millions of packages
of seed annually. See Fowler, The Plant Patent Act of 1930: A
Sociological History of its Creation, 82 J. Pat. & Tm. Off.
Soc. 621, 623, 632 (2000).8 In 1930, seed companies were not
primarily concerned with varietal protection, but were still trying
to successfully commodify seeds. There was no need to protect seed
breeding because there were few markets for seeds. See Kloppenburg
71 ("Seed companies' first priority was simply to establish a
market, and they continued to view the congressional distribution
as a principal constraint").
By contrast, nurseries at the time had successfully
commercialized asexually reproduced fruit trees and flowers. These
plants were regularly copied, draining profits from those who
discovered or bred new varieties. Nurseries
reproduction. It does not include the right to propagate by
seeds. This limitation in the right granted recognizes a practical
situation and greatly narrows the scope of the bill"). The
limitation to asexual reproduction was a recognition of the
"practical situation" that seedlings did not reproduce
true-to-type. An exclusive right to asexual reproduction was the
only type of coverage needed and thought possible given the state
of plant breeding at the time.
8 At its high point in 1897, over 20 million packages of seed
were distributed to farmers. See N. Klose, America's Crop Heritage
98 (1950). Even at the time the program was eliminated in 1924, it
was the third largest line item in the Department of Agriculture's
budget. See J. Kloppenburg, First the Seed: The Political Economy
of Plant Biotechnology 1492-2000, p. 71 (1988) (hereinafter
Kloppenburg).
137
were the primary subjects of agricultural marketing and so it is
not surprising that they were the specific focus of the PP A. See
Fowler, supra, at 634-635; Kneen, Patent Plants Enrich Our World,
National Geographic 357, 363 (1948).
Moreover, seed companies at the time could not point to
genuinely new varieties and lacked the scientific knowledge to
engage in formal breeding that would increase agricultural
productivity. See Kloppenburg 77; Fowler, supra, at 633 ("Absent
significant numbers of distinct new varieties being produced by
seed companies, variety protection through something like a patent
law would hardly have been considered a business necessity"). In
short, there is simply no evidence, let alone the overwhelming
evidence needed to establish repeal by implication, see Matsushita
Elec. Industrial Co. v. Epstein,
516 U. S. 367, 381
(1996), that Congress, by specifically protecting asexually
reproduced plants through the PP A, intended to preclude utility
patent protection for sexually reproduced plants.9
Third, petitioners argue that in 1952 Congress would not have
moved plants out of the utility patent provision and into § 161 if
it had intended § 101 to allow for protection of plants. Brief for
Petitioners 20. Petitioners again rely on
9 The dissent relies on United States v. Estate of Romani,
523 U. S. 517
(1998), for the proposition that "a later, more specific statute
trumps an earlier, more general one." See post, at 156. Yet in
Estate of Romani this purported rule was applied because the
meaning of the earlier statute was "unresolved." 523 U. S., at 530.
The Court noted that "despite the age of the statute, and despite
the fact that it has been the subject of a great deal of
litigation," its meaning had not been definitively established.
Id., at 529. By contrast, the statutory terms "manufacture or
composition of matter" were not similarly unresolved at the time
the PPA was passed. In addition, these subject-matter terms have
been interpreted broadly to evolve with developments in science and
technology. See Chakrabarty, 447 U. S., at 315. Moreover, even in
Estate of Romani, the Court considered that there was no "plain
inconsistency" between the earlier and later statutes. 523 U. S.,
at 533.
138
negative inference because they cannot point to any express
indication that Congress intended § 161 to be the exclusive means
of patenting plants. But this negative inference simply does not
support carving out subject matter that otherwise fits comfortably
within the expansive language of § 101, especially when § 101 can
protect different attributes and has more stringent requirements
than does § 161.
This is especially true given that Congress in 1952 did nothing
to change the substantive rights or requirements for obtaining a
plant patent. Absent a clear intent to the contrary, we are loath
to interpret what was essentially a housekeeping measure as an
affirmative decision by Congress to deny sexually reproduced plants
patent protection under § 101.
B
By passing the PVPA in 1970, Congress specifically authorized
limited patent-like protection for certain sexually reproduced
plants. Petitioners therefore argue that this legislation evidences
Congress' intent to deny broader § 101 utility patent protection
for such plants. Petitioners' argument, however, is unavailing for
two reasons. First, nowhere does the PVP A purport to provide the
exclusive statutory means of protecting sexually reproduced plants.
Second, the PVPA and § 101 can easily be reconciled. Because it is
harder to qualify for a utility patent than for a Plant Variety
Protection (PVP) certificate, it only makes sense that utility
patents would confer a greater scope of protection.
1
The PVP A provides plant variety protection for:
"The breeder of any sexually reproduced or tuber propagated
plant variety (other than fungi or bacteria) who has so reproduced
the variety . "7 U. S. C. §2402(a).
139
Infringement of plant variety protection occurs, inter alia, if
someone sells or markets the protected variety, sexually multiplies
the variety as a step in marketing, uses the variety in producing a
hybrid, or dispenses the variety without notice that the variety is
protected.10
Since the 1994 amendments, the PVP A also protects "any variety
that is essentially derived from a protected variety," §
2541(c)(1), and "any variety whose production requires the
10 Title 7 U. S. C. § 2541(a) provides in full: "(a) Acts
constituting infringement
"Except as otherwise provided in this subchapter, it shall be an
infringement of the rights of the owner of a protected variety to
perform without authority, any of the following acts in the United
States, or in commerce which can be regulated by Congress or
affecting such commerce, prior to expiration of the right to plant
variety protection but after either the issue of the certificate or
the distribution of a protected plant variety with the notice under
section 2567 of this title:
"(1) sell or market the protected variety, or offer it or expose
it for sale, deliver it, ship it, consign it, exchange it, or
solicit an offer to buy it, or any other transfer of title or
possession of it;
"(2) import the variety into, or export it from, the United
States;
"(3) sexually multiply, or propagate by a tuber or part of a
tuber, the variety as a step in marketing (for growing purposes)
the variety;
"(4) use the variety in producing (as distinguished from
developing) a hybrid or different variety therefrom;
"(5) use seed which had been marked 'Unauthorized Propagation
Prohibited' or 'Unauthorized Seed Multiplication Prohibited' or
progeny thereof to propagate the variety;
"(6) dispense the variety to another, in a form which can be
propagated, without notice as to being a protected variety under
which it was received; "(7) condition the variety for the purpose
of propagation, except to the extent that the conditioning is
related to the activities permitted under section 2543 of this
title;
"(8) stock the variety for any of the purposes referred to in
paragraphs (1) through (7);
"(9) perform any of the foregoing acts even in instances in
which the variety is multiplied other than sexually, except in
pursuance of a valid United States plant patent; or
"(10) instigate or actively induce performance of any of the
foregoing acts."
140
repeated use of a protected variety," § 2541(c)(3). See Plant
Variety Protection Act Amendments of 1994, § 9, 108 Stat. 3142.
Practically, this means that hybrids created from protected plant
varieties are also protected; however, it is not infringement to
use a protected variety for the development of a hybrid. See 7 U.
S. C. § 2541(a)(4)Y
The PVPA also contains exemptions for saving seed and for
research. A farmer who legally purchases and plants a protected
variety can save the seed from these plants for replanting on his
own farm. See § 2543 ("[I]t shall not infringe any right hereunder
for a person to save seed produced by the person from seed
obtained, or descended from seed obtained, by authority of the
owner of the variety for seeding purposes and use such saved seed
in the production of a crop for use on the farm of the person ...
"); see also Asgrow Seed Co. v. Winterboer,
513 U. S. 179 (1995). In
addition, a protected variety may be used for research. See 7 U. S.
C. § 2544 ("The use and reproduction of a protected variety for
plant breeding or other bona fide research shall not constitute an
infringement of the protection provided under this chapter"). The
utility patent statute does not contain similar exemptions.12
Thus, while the PVP A creates a statutory scheme that is
comprehensive with respect to its particular protections and
subject matter, giving limited protection to plant varieties that
are new, distinct, uniform, and stable, § 2402(a), nowhere does it
restrict the scope of patentable subject matter under § 101. With
nothing in the statute to bolster their view that
11 It is, however, infringement of a utility patent to use a
protected plant in the development of another variety. See infra,
at 143.
12The dissent argues that our "reading would destroy" the PVPA's
exemptions. Post, at 155. Yet such bold predictions are belied by
the facts. According to the Government, over 5,000 PVP certificates
have been issued, as compared to about 1,800 utility patents for
plants. Tr. of Oral Arg. 41. Since 1985 the PTO has interpreted §
101 to include utility patents for plants, and there is no evidence
that the availability of such patents has rendered the PVPA and its
specific exemptions obsolete.
141
the PVPA provides the exclusive means for protecting sexually
reproducing plants, petitioners rely on the legislative history of
the PVP A. They argue that this history shows the PVP A was enacted
because sexually reproducing plant varieties and their seeds were
not and had never been intended by Congress to be included within
the classes of things patentable under Title 35.13
The PVP A itself, however, contains no statement that PVP
certificates were to be the exclusive means of protecting sexually
reproducing plants. The relevant statements in the legislative
history reveal nothing more than the limited view of plant breeding
taken by some Members of Congress who believed that patent
protection was unavailable for sexually reproduced plants. This
view stems from a lack of awareness concerning scientific
possibilities.
Furthermore, at the time the PVP A was enacted, the PTO had
already issued numerous utility patents for hybrid plant processes.
Many of these patents, especially since the 1950's, included claims
on the products of the patented process, i. e., the hybrid plant
itself. See Kloppenburg 264. Such plants were protected as part of
a hybrid process and not on their own. Nonetheless, these hybrids
still enjoyed protection under § 101, which reaffirms that such
material was within the scope of § 101.
2
Petitioners next argue that the PVP A altered the subjectmatter
coverage of § 101 by implication. Brief for Petitioners 33-36. Yet
"the only permissible justification for a repeal by implication is
when the earlier and later statutes
13 Petitioners point to a House Report that concluded:
"Under patent law, protection is presently limited to those
varieties of plants which reproduce asexually, that is, by such
methods as grafting or budding. No protection is available to those
varieties of plants which reproduce sexually, that is, generally by
seeds." H. R. Rep. No. 91-1605, p. 1 (1970); Brief for Petitioners
40.
142
are irreconcilable." Morton v. Mancari,
417 U. S. 535, 550
(1974). "The rarity with which [the Court has] discovered implied
repeals is due to the relatively stringent standard for such
findings, namely, that there be an irreconcilable conflict between
the two federal statutes at issue." Matsushita, 516 U. S., at 381
(internal quotation marks omitted).
To be sure, there are differences in the requirements for, and
coverage of, utility patents and PVP certificates issued pursuant
to the PVP A. These differences, however, do not present
irreconcilable conflicts because the requirements for obtaining a
utility patent under § 101 are more stringent than those for
obtaining a PVP certificate, and the protections afforded by a
utility patent are greater than those afforded by a PVP
certificate. Thus, there is a parallel relationship between the
obligations and the level of protection under each statute.
It is much more difficult to obtain a utility patent for a plant
than to obtain a PVP certificate because a utility patentable plant
must be new, useful, and nonobvious, 35 U. S. C. §§ 101-103. In
addition, to obtain a utility patent, a breeder must describe the
plant with sufficient specificity to enable others to "make and
use" the invention after the patent term expires. § 112. The
disclosure required by the Patent Act is "the quid pro quo of the
right to exclude." Kewanee Oil Co. v. Bicron Corp.,
416 U. S. 470, 484
(1974). The description requirement for plants includes a deposit
of biological material, for example, seeds, and mandates that such
material be accessible to the public. See 37 CFR §§ 1.801-1.809
(2001); see also App. 39 (seed deposits for U. S. Patent No.
5,491,295).
By contrast, a plant variety may receive a PVP certificate
without a showing of usefulness or nonobviousness. See 7 U. S. C. §
2402(a) (requiring that the variety be only new, distinct, uniform,
and stable). Nor does the PVPA require a description and disclosure
as extensive as those required under § 101. The PVPA requires a
"description of the vari-
143
ety setting forth its distinctiveness, uniformity and stability
and a description of the genealogy and breeding procedure, when
known." 7 U. S. C. § 2422(2). It also requires a deposit of seed in
a public depository, § 2422(4), but neither the statute nor the
applicable regulation mandates that such material be accessible to
the general public during the term of the PVP certificate. See 7
CFR § 97.6 (2001).
Because of the more stringent requirements, utility patent
holders receive greater rights of exclusion than holders of a PVP
certificate. Most notably, there are no exemptions for research or
saving seed under a utility patent. Additionally, although Congress
increased the level of protection under the PVP A in 1994, a PVP
certificate still does not grant the full range of protections
afforded by a utility patent. For instance, a utility patent on an
inbred plant line protects that line as well as all hybrids
produced by crossing that inbred with another plant line.
Similarly, the PVP A now protects "any variety whose production
requires the repeated use of a protected variety." 7 U. S. C. §
2541(c)(3). Thus, one cannot use a protected plant variety to
produce a hybrid for commercial sale. PVP A protection still falls
short of a utility patent, however, because a breeder can use a
plant that is protected by a PVP certificate to "develop" a new
inbred line while he cannot use a plant patented under § 101 for
such a purpose. See 7 U. S. C. § 2541(a)(4) (infringement includes
"use [of] the variety in producing (as distinguished from
developing) a hybrid or different variety therefrom"). See also H.
R. Rep. No. 91-1605, p. 11 (1970); 1 D. Chisum, Patents §
1.05[2][d][i], p. 549 (2001).
For all of these reasons, it is clear that there is no "positive
repugnancy" between the issuance of utility patents for plants and
PVP coverage for plants. Radzanower v. Touche Ross & Co.,
426 U. S. 148,
155 (1976). Nor can it be said that the two statutes "cannot
mutually coexist." Ibid. Indeed, "when two statutes are capable of
coexistence, it is the duty of the courts, absent a clearly
expressed congressional inten-
144
tion to the contrary, to regard each as effective." Morton,
supra, at 551. Here we can plainly regard each statute as effective
because of its different requirements and protections. The plain
meaning of § 101, as interpreted by this Court in Chakrabarty,
clearly includes plants within its subject matter. The PPA and the
PVPA are not to the contrary and can be read alongside § 101 in
protecting plants.
3
Petitioners also suggest that even when statutes overlap and
purport to protect the same commercially valuable attribute of a
thing, such "dual protection" cannot exist. Brief for Petitioners
44-45. Yet this Court has not hesitated to give effect to two
statutes that overlap, so long as each reaches some distinct cases.
See Connecticut Nat. Bank v. Germain,
503 U. S. 249, 253 (1992)
(statutes that overlap "do not pose an either-or proposition" where
each confers jurisdiction over cases that the other does not
reach). Here, while utility patents and PVP certificates do contain
some similar protections, as discussed above, the overlap is only
partial.
Moreover, this Court has allowed dual protection in other
intellectual property cases. "Certainly the patent policy of
encouraging invention is not disturbed by the existence of another
form of incentive to invention. In this respect the two systems
[trade secret protection and patents] are not and never would be in
conflict." Kewanee Oil, supra, at 484; see also Mazer v. Stein,
347 U. S. 201,
217 (1954) (the patentability of an object does not preclude the
copyright of that object as a work of art). In this case, many
plant varieties that are unable to satisfy the stringent
requirements of § 101 might still qualify for the lesser
protections afforded by the PVPA.
III
We also note that the PTO has assigned utility patents for
plants for at least 16 years and there has been no indica-
145
tion from either Congress or agencies with expertise that such
coverage is inconsistent with the PVP A or the PP A. The Board of
Patent Appeals and Interferences, which has specific expertise in
issues of patent law, relied heavily on this Court's decision in
Chakrabarty when it interpreted the subject matter of § 101 to
include plants. In re Hibberd, 227 USPQ 443 (1985). This highly
visible decision has led to the issuance of some 1,800 utility
patents for plants. Moreover, the PTO, which administers § 101 as
well as the PPA, recognizes and regularly issues utility patents
for plants. In addition, the Department of Agriculture's Plant
Variety Protection Office acknowledges the existence of utility
patents for plants.
In the face of these developments, Congress has not only failed
to pass legislation indicating that it disagrees with the PTO's
interpretation of § 101; it has even recognized the availability of
utility patents for plants. In a 1999 amendment to 35 U. S. C. §
119, which concerns the right of priority for patent rights,
Congress provided: "Applications for plant breeder's rights filed
in a WTO [World Trade Organization] member country ... shall have
the same effect for the purpose of the right of priority ... as
applications for patents, subject to the same conditions and
requirements of this section as apply to applications for patents."
35 U. S. C. § 119(f) (1994 ed., Supp. V). Crucially, § 119(f) is
part of the general provisions of Title 35, not the specific
chapter of the PP A, which suggests a recognition on the part of
Congress that plants are patentable under § 101.
IV
For these reasons, we hold that newly developed plant breeds
fall within the terms of § 101, and that neither the PPA nor the
PVPA limits the scope of § 101's coverage. As in Chakrabarty, we
decline to narrow the reach of § 101 where Congress has given us no
indication that it intends
146
SCALIA, J., concurring
this result. 447 U. S., at 315-316. Accordingly, we affirm the
judgment of the Court of Appeals.
It is so ordered.
JUSTICE O'CONNOR took no part in the consideration or decision
of this case.
JUSTICE SCALIA, concurring.
This case presents an interesting and difficult point of
statutory construction, seemingly pitting against each other two
perfectly valid canons of interpretation: (1) that statutes must be
construed in their entirety, so that the meaning of one provision
sheds light upon the meaning of another; and (2) that repeals by
implication are not favored. I think these sensible canons are
reconcilable only if the first of them is limited by the second.
That is to say, the power of a provision of law to give meaning to
a previously enacted ambiguity comes to an end once the ambiguity
has been authoritatively resolved. At that point, use of the later
enactment produces not clarification (governed by the first canon)
but amendment (governed by the second).
In the present case, the only ambiguity that could have been
clarified by the words added to the utility patent statute by the
Plant Patent Act of 1930 (PP A) is whether the term "composition of
matter" included living things. The newly enacted provision for
plants invited the conclusion that this term which preceded it did
not include living things. (The term "matter," after all, is
sometimes used in a sense that excludes living things. See
Webster's New International Dictionary 1515 (2d ed. 1950):
"Physical substance as made up of chemical elements and
distinguished from incorporeal substance, action, qualities, etc
.... 'Matter is inert, senseless, and lifeless.' Johnson.") It is
important to note that this is the only way in which the new PPA
language could have clarified the ambiguity: There was no way in
which "composition of matter" could be regarded as a
147
category separate from plants, but not separate from other
living things.
Stare decisis, however, prevents us from any longer regarding as
an open question-as ambiguous-whether "composition of matter"
includes living things. Diamond v. Chakrabarty,
447 U. S. 303, 312-313
(1980), holds that it does. As the case comes before us, therefore,
the language of the PPA-if it is to have any effect on the
outcome-must do so by way of amending what we have held to be a
statute that covers living things (and hence covers plants). At
this point the canon against repeal by implication comes into play,
and I agree with the Court that it determines the outcome. I
therefore join the opinion of the Court.
JUSTICE BREYER, with whom JUSTICE STEVENS joins, dissenting.
The question before us is whether the words "manufacture" or
"composition of matter" contained in the utility patent statute, 35
U. S. C. § 101 (1994 ed.) (Utility Patent Statute), cover plants
that also fall within the scope of two more specific statutes, the
Plant Patent Act of 1930 (PPA), 35 U. S. C. § 161 et seq. (1994 ed.
and Supp. V), and the Plant Variety Protection Act (PVPA), 7 U. S.
C. §2321 et seq. I believe that the words "manufacture" or
"composition of matter" do not cover these plants. That is because
Congress intended the two more specific statutes to exclude patent
protection under the Utility Patent Statute for the plants to which
the more specific Acts directly refer. And, as the Court implicitly
recognizes, this Court neither considered nor decided this question
in Diamond v. Chakrabarty,
447 U. S. 303 (1980).
Consequently, I dissent.
I
Respondent and the Government claim that Chakrabarty controls
the outcome in this case. This is incorrect, for Chakrabarty said
nothing about the specific issue before us.
148
BREYER, J., dissenting
Chakrabarty, in considering the scope of the Utility Patent
Statute's language "manufacture, or composition of matter," 35 U.
S. C. § 101 (1994 ed.), asked whether those words included such
living things as bacteria-a substance to which neither of the two
specific plant Acts refers. 447 U. S., at 313-314. The Court held
that the Utility Patent Statute language included a "new" bacterium
because it was "a nonnaturally occurring manufacture or composition
of matter" that was "not nature's handiwork." Id., at 309-310. It
quoted language from a congressional Committee Report indicating
that "Congress intended statutory subject matter to 'include
anything under the sun that is made by man.''' Id., at 309 (quoting
S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No.
1923, 82d Cong., 2d Sess., 6 (1952)). But it nowhere said or
implied that this Utility Patent Statute language also includes the
very subject matter with which the two specific statutes deal,
namely, plants. Whether a bacterium technically speaking is, or is
not, a plant, the Court considered it a "life form," and not the
kind of "plant" that the two specific statutes had in mind. 447 U.
S., at 314 (noting that the PVPA specifically excluded bacteria,
and that the Court of Customs and Patent Appeals had held that
bacteria were not plants for purposes of the PPA).
The Court did consider a complicated argument that sought
indirectly to relate the two specific plant statutes to the issue
before it. That argument went roughly as follows: (1) Congress
enacted two special statutes related to plants. (2) Even though
those two statutes do not cover bacteria, the fact that Congress
enacted them shows that Congress thought the Utility Patent
Statute's language ("manufacture, or composition of matter") did
not cover any living thing, including bacteria. (3) Congress
consequently must have intended the two special Acts to provide
exclusive protection for all forms of "life" whether they do, or do
not, count as the kinds of "plants" to which the specific statutes
refer.
149
The Court, in reply, wrote that Congress, when enacting the
specific statutes, might have (wrongly) believed that the Utility
Patent Statute did not apply to plants, probably because Congress
thought that plants were "natural products," not human products.
Id., at 311. It added that Congress also might have believed that
it was too difficult for plant inventors to meet patent law's
ordinary "written description" requirement. Id., at 312. In
addition, the Court pointed out that the relevant distinction
between unpatentable and patentable subject matter was not between
living and inanimate things, but rather between products of nature
and human-made inventions. Id., at 312-313. As such, the bacteria
at issue were patentable because they were products of human
invention. And the Court concluded that "nothing" in Congress'
decision to exclude bacteria from the PVPA supported "petitioner's
position," namely, that Congress intended no utility patent
protection for any living thing. Id., at 313-314.
Neither this refutation nor the argument itself decides the
question here. That question is not about general coverage for
matters that the special statutes do not mention (namely, nonplant
life forms such as bacteria). It is about general coverage for
matters to which the special plant statutes do refer (namely,
plants). Chakrabarty neither asked, nor answered, this latter
question, the question now before us. And nothing in the Court's
opinion indicates the contrary.
II
The critical question, as I have said, is whether the two
specific plant statutes embody a legislative intent to deny
coverage under the Utility Patent Statute to those plants to which
the specific plant statutes refer. In my view, the first of these
statutes, the PP A, reveals precisely that intent. And nothing in
the later history of either the Utility Patent Statute or the PVP A
suggests the contrary.
150
BREYER, J., dissenting
As initially enacted in 1930, the PP A began by amending the
Utility Patent Statute to read as follows:
"Any person who has invented or discovered any new and useful
art, machine, manufacture, or composition of matter, or any new and
useful improvements thereof, or who has invented or discovered and
asexually reproduced any distinct and new variety of plant, other
than a tuber-propagated plant ... may ... obtain a patent
therefor[e]." Rev. Stat. § 4886, as amended by Act of May 23, 1930,
§ 1, 46 Stat. 376 (language added by the PPA italicized).
This language refers to all plants. It says that an inventor-in
principle-can obtain a patent on any plant (the subject matter of
the patent) that meets three requirements. I t must be distinct; it
must be new; and on one or more occasions it must have been
"asexually reproduced," e.
g., reproduced by means of a
graft.
This last-mentioned "graft" requirement does not separate (1)
those plants that can reproduce through grafting from (2) those
plants that can reproduce by seed. The two categories are not
mutually exclusive. P. Raven, R. Evert, & S. Eichhorn, Biology
of Plants 179-180,255 (6th ed. 1999). Many plants-perhaps virtually
any plant-can be reproduced "asexually" as well as by seed. S. Rep.
No. 315, 71st Cong., 2d Sess., 5 (1930). Rather, the "asexual
reproduction" requirement sought to ensure that the inventor was
capable of reproducing the new variety "asexually" (through a
graft) because that fact would guarantee that the variety's new
characteristics had genetic (rather than, say, environmental)
causes and would prove genetically stable over time. See ibid. ("A
plant patent covers only the exclusive right of asexual
reproduction, and obviously it would be futile to grant a patent
for a new and distinct variety unless the variety had been
demonstrated to be susceptible to asexual reproduction"); cf. Dunn
v. Ragin, 50 USPQ 472, 474 (1941)
151
(noting that asexual reproduction "determine[s] that the progeny
in fact possess the characteristic or characteristics which
distinguish it as a new variety").
Although the section defining the PP A's coverage does not limit
its scope to plants that reproduce primarily through grafting, a
later section does so limit the protection that it offers. That
section specifies that the patent holder will receive "the
exclusive right to asexually reproduce the plant," e.
g.,
the right to reproduce it through grafting, but he will not receive
an exclusive right to reproduce the plant sexually, i. e., the
right to reproduce it through seeds. 46 Stat. 376. And this is true
regardless of whether the patent holder could reproduce true to
type offspring through seeds. See S. Rep. No. 315, at 4 ("On the
other hand, [the PPA] does not give any patent protection to the
right of propagation of the new variety by seed, irrespective of
the degree to which the seedlings come true to type"). This was a
significant limitation because, the Court's contrary claim
notwithstanding, ante, at 135, and n.7, it was readily apparent in
1930 that a plant's desirable characteristics could be preserved
through reproduction by seed. See Fowler, The Plant Patent Act of
1930: A Sociological History of its Creation, 82
In sum, the PP A permits patenting of new and distinct varieties
of (1) plants that breeders primarily reproduce through grafts
(say, apple trees), (2) plants that breeders primarily reproduce
through seeds (say, corn), and (3) plants that reproduce both ways
(say, violets). See C. Chong, Plant Propagation, reprinted in 1 CRC
Handbook of Plant Science in Agriculture 91-92, 94, 104 (B.
Christie & A. Hanson eds., 1987); Raven, Evert, & Eichhorn,
supra, at 179. But, because that statute left plant buyers free to
keep, to reproduce, and to sell seeds, the statute likely proved
helpful only to those in the first category. Both the PPA's
legislative history and the earliest patents granted under the Act
fully support this interpretation. See S. Rep. No. 315, at 3
152
BREYER, J., dissenting
(explaining that varieties that "resul[t] from seedlings of
cross pollenization of two species" were patentable under the Act);
Plant Patent Nos. 1-2, 5-6, 8-11 (roses); Plant Patent Nos. 7, 15
(peach trees).
Given these characteristics, the PPA is incompatible with the
claim that the Utility Patent Statute's language ("manufacture, or
composition of matter") also covers plants. To see why that is so,
simply imagine a plant breeder who, in 1931, sought to patent a
new, distinct variety of plant that he invented but which he has
never been able to reproduce through grafting, i. e., asexually.
Because he could not reproduce it through grafting, he could not
patent it under the more specific terms of the PP A. Could he
nonetheless patent it under the more general Utility Patent Statute
language "manufacture, or composition of matter?"
Assume the court that tried to answer that question was
prescient, i. e., that it knew that this Court, in Chakrabarty, 447
U. S., at 311-312, would say that the Utility Patent Statute
language ("manufacture," or "composition of matter") in principle
might cover "anything under the sun," including bacteria. Such a
prescient court would have said that the Utility Patent Statute did
cover plants had the case reached it in 1929, before Congress
enacted the more specific 1930 law. But how could any court decide
the case similarly in 1931 after enactment of the 1930 amendment?
To do so would virtually nullify the PP A's primary condition-that
the breeder have reproduced the new characteristic through a
graft-reading it out of the Act. Moreover, since the Utility Patent
Statute would cover, and thereby forbid, reproduction by seed, such
a holding would also have read out of the statute the PPA's more
limited list of exclusive rights. Consequently, even a prescient
court would have had to say, as of 1931, that the 1930 Plant Patent
Act had, in amending the Utility Patent Statute, placed the subject
matter of the PPA-namely, plants-outside the scope of the words
"manufacture, or composition of matter." See United States
153
v. Estate of Romani,
523 U. S. 517, 530-533
(1998) (holding that a later, specific statute trumps an earlier,
more general statute).
Nothing that occurred after 1930 changes this conclusion.
In 1952, the Utility Patent Statute was recodified, and the PP A
language I have quoted was given its own separate place in the
Code. See 35 U. S. C. § 161 et seq. (1994 ed. and Supp. V). As
Pioneer itself concedes, that change was not "substantive." Brief
for Respondent 7; see also ante, at 133. Indeed, as recodified the
PP A still allows a breeder to obtain a patent when he "invents or
discovers and asexually reproduces any distinct and new variety of
plant," 35 U. S. C. § 161 (1994 ed.) (emphasis added), but it only
allows the patent holder to "exclude others from asexually
reproducing the plant or selling or using the plant so reproduced,"
§ 163 (emphasis added).
Nor does the enactment of the Plant Variety Protection Act of
1970 change the conclusion. The PVP A proved necessary because
plant breeders became capable of creating new and distinct
varieties of certain crops, corn, for example, that were valuable
only when reproduced through seeds-a form of reproduction that the
earlier Act freely permitted. See S. Rep. No. 91-1246, pp. 2-3
(1970). Just prior to its enactment a special Presidential
Commission, noting the special problems that plant protection
raised and favoring the development of a totally new plant
protection scheme, had recommended that "[a]ll provisions in the
patent statute for plant patents be deleted .... " President's
Commission on the Patent System, To Promote the Progress of Useful
Arts, S. Doc. No.5, 90th Cong., 1st Sess., 20-21 (1967)
(hereinafter S. Doc.). Instead Congress kept the PP A while adding
the PVPA. The PVPA gave patent-like protection (for 20 years) to
plants reproduced by seed, and it excluded the PP A's requirement
that a breeder have "asexually reproduced" the plant. 7 U. S. C. §
§ 2402, 2483. It imposed certain specific requirements. § 2402
(variety must be new,
154
BREYER, J., dissenting
distinct, uniform, and stable). And it provided the breeder with
an exclusive right to sell, offer to sell, reproduce, import, or
export the variety, including the seeds. § 2483.
At the same time, the PVPA created two important exceptions. The
first provided that a farmer who plants his fields with a protected
plant "shall not infringe any right hereunder" by saving the seeds
and planting them in future years. § 2543. The second permitted
"use and reproduction of a protected variety for plant breeding or
other bona fide research." § 2544.
Nothing in the history, language, or purpose of the 1970 statute
suggests an intent to reintroduce into the scope of the general
words "manufacture, or composition of matter" the subject matter
that the PP A had removed, namely, plants. To the contrary, any
such reintroduction would make meaningless the two exceptions-for
planting and for research-that Congress wrote into that Act. It is
not surprising that no party argues that passage of the PVP A
somehow enlarged the scope of the Utility Patent Statute.
III
The Court replies as follows to the claim that its reading of
the Utility Patent Statute nullifies the PPA's limitation of
protection to plants produced by graft and the PVPA's exemptions
for seeds and research: (1) The Utility Patent Statute applies only
to plants that are useful, novel, nonobvious, and for which the
inventor provides an enabling written description of the invention.
35 U. S. C. §§ 101, 102, 103, 112 (1994 ed. and Supp. V). (2) The
PVPA applies to plants that are novel, distinct, uniform, and
stable. 7 U. S. C. § 2402. (3) The second set of criteria seem
slightly easier to meet, as they do not include nonobviousness and
a written description (Pioneer does not argue that the "useful"
requirement is significant). (4) And Congress could reasonably have
intended the planting and research exceptions to
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apply only to the set of plants that can meet the easier, but
not the tougher, criteria.
I do not find this argument convincing. For one thing, it is not
clear that the general patent law requirements are significantly
tougher. Counsel for Pioneer stated at oral argument that there are
many more PVP certificates than there are plant patents. But he
added that the major difference in criteria is the difference
between the utility patent law's "nonobviousness" requirement and
the specific Acts' requirement of "newness"-a difference that may
reflect the Patent Office's more "rigorous" examination process.
See Tr. of Oral Arg. 26, 30. But see S. Doc., at 20-21 (suggesting
little difference because patent office tends to find
"nonobviousness" as long as the plant is deemed "new" by the
Department of Agriculture).
In any case, there is no relationship between the criteria
differences and the exemptions. Why would anyone want to limit the
exemptions-related to seedplanting and research-only to those new
plant varieties that are slightly less original? Indeed, the
research exemption would seem more useful in respect to more
original, not less original, innovation. The Court has advanced no
sound reason why Congress would want to destroy the exemptions in
the PVP A that Congress created. And the Court's reading would
destroy those exemptions.
The Court and JUSTICE SCALIA'S concurrence also rely upon the
interpretive canon that disfavors repeal by implication. The Court,
citing Matsushita Elec. Industrial Co. v. Epstein,
516 U. S. 367 (1996),
says that "there is simply no evidence" that the PPA was meant to
preclude § 101 protection for sexually reproduced plants. Ante, at
137. But reliance on the canon of "implied repeal" is misplaced.
The canon has traditionally been embraced when a party claims that
a later statute-that does not actually modify an earlier
statute-implicitly repeals the earlier legislation. E. g., 516 U.
S., at 380-381. That canon has no relevance to the
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BREYER, J., dissenting
PPA-which explicitly amended the Utility Patent Statute by
limiting protection to plants produced by graft. Even were that not
so, the Court has noted that a later, more specific statute will
ordinarily trump the earlier, more general one. See United States
v. Estate of Romani, 523 U. S., at 530-533.
Regardless, canons are not mandatory rules. They are guides to
help courts determine likely legislative intent. See Chickasaw
Nation v. United States, ante, p. 84; see also Circuit City Stores,
Inc. v. Adams,
532 U.
S. 105, 115 (2001);
id., at 137-140 (SOUTER, J.,
dissenting). And that intent is critical. Those who write statutes
seek to solve human problems. Fidelity to their aims requires us to
approach an interpretive problem not as if it were a purely logical
game, like a Rubik's Cube, but as an effort to divine the human
intent that underlies the statute. Here that effort calls not for
an appeal to canons, but for an analysis of language, structure,
history, and purpose. Those factors make clear that the Utility
Patent Statute does not apply to plants. Nothing in Chakrabarty
holds to the contrary.
For these reasons, I dissent.
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