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Plants Referenced Items (159, 160, 161)
(159)               Inapplicability of 35 U.S.C. 102(d) to
                     Plant Breeder's Rights Certificates

The USPTO recently took the position that a rejection under 35
U.S.C. 102(d) would be appropriate based on a Plant Breeder's
Rights (PBR) certificate granted prior to the date of the application
for plant patent in the United States where the application for PBR was
filed more than twelve months before the filing of the application in
the U.S.

After review of the legislative history of 35 U.S.C.    119(f) as
amended by the American Inventor's Protection Act of 1999 (AIPA)
(Title IV of the Intellectual Property and Communications Omnibus
Reform Act of 1999 (S. 1948) as introduced in the 106th
Congress on November 17, 1999), the USPTO has determined
that a rejection under 35 U.S.C. 102(d) based on a PBR certificate
is not appropriate. While section 4802 of the AIPA added
plant breeder's rights as a basis for a foreign priority claim under
35 U.S.C. 119(f), there was no corresponding change to 35 U.S.C.
102(d). The legislative history accompanying the AIPA makes it clear
that "Section 4802 also adds subsection (f) to section 119 of the
Patent Act to provide for the right of priority in the United States on
the basis of an application for a plant breeder's right first filed in
a WTO member country or in a UPOV Contracting Party . . . Because
section 119 presently addresses only patents and inventors'
certificates, applicants from these countries are technically unable to
base a priority claim on a foreign application for a plant breeder's
right when seeking plant patent or utility patent protection for a
plant variety in this country." (Congressional Record, S.
14723 (Nov. 17, 1999)). This legislative history supports the position
that absent a clear statutory basis, rejections under 35 U.S.C.
102(d) based on PBR certificates are not appropriate. Moreover, unlike
the changes made in Public Law 92-358 (July 28, 1972) which added
inventor's certificates to both 35 U.S.C. 119(d) and 35 U.S.C.
102(d), the AIPA did not include a corresponding change to 35 U.S.C.
102(d). Therefore, to maintain consistency in statutory interpretation
the USPTO will not make rejections under 35 U.S.C.
102(d) based on a PBR certificate. Any such rejections that have been
made under 35 U.S.C. 102(d) will be withdrawn.

After consulting with interested circles in industry and the bar,
the USPTO may consider seeking legislation that would further clarify
the status of certificates of plant variety protection as prior art.

Questions regarding this notice may be directed to Magdalen
Greenlief, by telephone at (703) 305-8813, by facsimile at (703)
305-8825, or by e-mail to

Jan. 22, 2001                                              STEPHEN G. KUNIN
                          Deputy Commissioner for Patent Examination Policy

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