J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001),[1] was a decision of the United States Supreme Court holding for the first time that utility patents may be issued for crops and other flowering (sexually reproducing) plants under 35 U.S.C.

Ag Supply, Inc., doing business as Farm Advantage, Inc., purchased patented hybrid corn seeds from Pioneer in bags bearing the foregoing label license.

The district court[9] and Federal Circuit[10] rejected J.E.M.’s arguments and held that it infringed Pioneer’s patents.

argued "that the specifications of Pioneer's patents are not enabling; they criticize the written description and the utility of the deposits, and generally challenge validity."

The majority of the Court considered the case governed by the decision twenty years previous in Diamond v. Chakrabarty, 447 U.S. 303, 312-13 (1980).

[15] In that case, the Court had upheld the entitlement of a company to a utility patent on a man-made micro-organism capable of digesting oil spills.

did not dispute that plants “fall within the terms of § 101's broad language that includes ‘manufacture’ or ‘composition of matter.’ "[17] The argument that J.E.M.

made against Pioneer stood or fell with J.E.M.’s proposition that Congress intended the PVPA (or it and the PPA) to be the sole means for protecting plant inventions.

To be sure, the Court said, when Congress passed the PPA in 1930 it did so because it thought plants could not be protected under the regular patent law (what is now § 101).

The Court concluded: 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.

"[24] In Chakrabarty the issue was whether the words “manufacture” and “composition of matter” in § 101 “included such living things as bacteria–a substance to which neither of the two specific plant Acts refers.”[25] The Chakrabarty Court then decided that § 101 covered “a 'new' bacterium because it was 'a non-naturally occurring manufacture or composition of matter' that was 'not nature’s handiwork.

the question now before us.”[26] He ended by criticizing the majority for not making "an effort to divine the human intent that underlies the statute," based on "an analysis of language, structure, history, and purpose.

sold bags of Pioneer's patented corn, and Ottawa was added to the case as a defendant during the litigation.

"[32] Turning again to the Mallinckrodt decision, the court rejected Ottawa's argument that the label license was unenforceable as anticompetitive.

The courts and the PTO have illegitimately bypassed representative government to create and enforce such private power.

[37] She agreed that the Constitution permitted Congress to pass a law establishing such legal protection, if it so chose, because farming was within the "useful Arts" in 1789.

decision to a determination that these two cases inexorably led to the outlawing of the saving and "replanting" of patented seed in Bowman v. Monsanto Co.

[T]hat issue turns on the meaning of the statutory word "make," which neither of the earlier two cases addressed.

[41] On the other hand, Kevin M. Baird applauded the decision because of the economic protection it granted agricultural industry: In Pioneer, the United States Supreme Court laid to rest the question of whether sexually reproduced plants were statutory subject matter under section 101.

decision is that universities will be able to more easily capture the full economic value of their plant genetic inventions and discoveries.

The negative aspect of this case, however, is that professors and universities will be hesitant to publish their findings until they have obtained IP protection or until they believe the discovery is not worth marketing.

...Developments in plant biotechnology present universities with the problematic issue of biopiracy and with the opportunity to provide significant humanitarian service.