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“The petitions argue the denials of institution are flouting Executive Order 14036’s ‘mandate that the PTO and [U.S. Department of Agriculture] USDA collaborate to ensure that the patent system does not unnecessarily reduce…competition.’”
Two recent petitions to the U.S. Patent and Trademark Office (USPTO) for Director Review of denial of post grant review institution decisions claim that the Patent Trial and Appeal Board’s (PTAB’s) approach to reviewing plant utility claims is deterring competition in seed markets.
The petitions, filed by Inari Agriculture, Inc., ask the USPTO Director to reverse two denials of institution relating to U.S. patent Nos. 11,659,803 and 11,666,020, owned by Pioneer Hi-Bred International, Inc., both covering inbred corn plants.
A Heightened Standard That is Hurting Farmers
According to the petition relating to the ‘803 patent (PGR2024-00019), the PTAB has created a new presumption of patentability in inter partes reviews (IPRs) and post grant reviews (PGRs) with respect to plant utility patent claims. To overcome this presumption, potential challengers of such patents are required to access and sequence seed deposits that are not even required by the Office pre-grant, during examination. This essentially amounts to a heightened standard post-grant that the USPTO does not apply when examiners assess plant utility claims in the first instance. “Such seed access and analysis would wrongly subject potential challengers to the risk of patent infringement merely in seeking to overcome the Board’s heightened new standard,” explains the petition.
In its decision on institution, the PTAB ultimately agreed with Pioneer that Inari had failed to “compare the claims of the ’803 patent with the prior art and that would include ‘the seed deposit, which describes the claimed variety and enables a POSA to make and use it.” In its Director Review decision, Inari argues that “a seed deposit is required to satisfy §112 mandates and is not sequenced pre-grant as part of any initial patentability determination,” and that is thus improper for the Board to have faulted Inari’s analysis under Section 103/ obviousness. “The Challenged Claims do not require any sequence—much less that associated with the deposited seed,” explains the petition. “Instead, as [patent owner] admits, the deposit is merely ‘an exemplary embodiment.’”
At a practical level, the petition highlights what it characterizes as “an increasingly critical aspect of patent policy,” namely that U.S. farmers are struggling with “unnecessary restrictions on such seed deposits and face improper patent infringement charges.” Pointing to Corteva Agriscience LLC. v. Inari Agric., Inc., C.A. No. 23-1059-JFM (D. Del.), Inari noted that Pioneer has already sued it “for doing exactly what the Board concluded is required here.” The Board’s suggestion that the public must “analyze seed deposits as a threshold prerequisite for a viable §103 challenge ‘unnecessarily reduce[s] competition in seed…markets beyond that reasonably contemplated by the Patent Act,’” adds the petition. As a result, the denial of institution is flouting Executive Order 14036’s “mandate that the PTO and [U.S. Department of Agriculture] USDA collaborate to ensure that the patent system does not unnecessarily reduce such competition.”
Inari is urging the Director to grant the petition and reverse the denial of institution.
Rewarding Patent Applicants for Withholding Information
The second petition relates to PGR2024-00020, which challenged Pioneer’s U.S. Patent No. 11,666,020. There, Inari argues that the petition was wrongly denied institution because the PTAB rewarded Pioneer for holding back necessary information under the guise of trade secret protection.
Essentially, according to the petition, Pioneer refused to provide the USPTO with information the examiner requested during examination concerning sibling plants because it claimed one of the parent plants was proprietary and had not been disclosed publicly. This was “notwithstanding that [patent owner] PO had used this allegedly secret parent to breed a different inbred corn plant for which PO had filed a different utility application (EX1043) the same day as that for the ’020 Patent.” The examiner issued a notice of allowance nonetheless.
At the PTAB, despite Inari’s arguments about the implications of allowing plant patents under such reasoning, the Board rejected the petition, explaining that Inari had “only identified one parent” of the claimed variety and ignored the petition’s argument that the examiner’s reason for allowance—”that there was allegedly ‘no motivation in the prior art’ to cross Smalley [one of the parents]—was legal error in that it failed to consider proprietary information. Specifically, said the PGR petition, this logic would unreasonably impair competition “and is not reasonably contemplated by the Patent Act—notwithstanding black-letter law and the PTO’s commitment (EX1023) in response to the President’s Executive Order 14036.”
The Director Review Petition urges the USPTO Director to grant the petition in order to clarify compliance with the USDA’s recommendations. The USDA released a statement on October 8 urging recipients of funding from the USDA’s National Institute of Food and Agriculture (NIFA) to “plan their intellectual property protection, licensing, and material transfer strategies” around the goal of sharing results freely with the public and increasing free access to “germplasm” (genetic resources necessary for plant breeding). The statement acknowledged the rights of grantees to retain title to inventions under the Bayh-Dole Act but said it “encourages the results and accomplishments of the research, education, and extension activities it funds to be made available to the public consistent with federal law.”
While some have criticized the USDA’s statement, Inari notes that the PTAB’s reasoning specifically contradicts the USDA’s directive “that the PTO consider requiring disclosure of ‘breeding histories or pedigrees back to known and publicly available parents’ as part of the original disclosure ‘for utility patents pertaining to plant varieties and traits.’”
The Director Review petition argues that letting the decision stand could lead examiners to believe that “they can and should allow plant utility claims even when applicants follow PO’s lead and skirt requests for information on the ground that information about parental lines and breeding histories is ‘proprietary.’”
No decision on the Director Review petitions had been received as of the time of publication.
In a separate PGR filed by Inari in March 2023, the PTAB on October 25, 2024, found all challenged claims of Pioneer’s U.S. Patent No. 11,371,055 for “Herbicide Resistance Genes” unpatentable for lack of enablement.
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