Incentivizing Discovery (rather than invention)

by Dennis Crouch

In my patent classes, we talk about the distinction between invention and discovery (and even re-discovery).  The patent statute itself opens the door to patenting of discoveries in addition to inventions.  However, modern courts have largely ignored or rejected that possibility.  The following case is an interesting starting point for a discussion of the value of discovery (rather than invention) and the role of the patent system in providing an incentive for that activity.

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In re Beineke (Fed. Cir. 2012)

Professor Beineke loves the two white oak trees growing in his front yard. He loves them so much that he filed for patent protection. Specifically, Beineke filed two plant patent applications asserting that the trees qualified for protection under 35 U.S.C. 161.  That statute was last edited in 1954 and reads:

[w]hoever 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.

The USPTO rejected the applications — concluding that the trees did not qualify as patentable discoveries because, inter alia, they had been “found in an uncultivated state” in direct contradiction to the statute. 

On appeal, the Federal Circuit has affirmed the rejection. In doing so, the court has re-affirmed that the patent system requires human activity in the creation of the subject matter sought to be patented.  In particular, the court held that the patent applicant must have either (1) been “the result of plant breeding or other agricultural or horticultural efforts;” (2) been “created by the ‘inventor’;” or (3) been found as a seedling in a cultivated state.  Beineke was unable to qualify under any of the these three prongs and thus the court held his claims unpatentable.

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For those concerned with plant patents, there are several important doctrinal points in the case, including the court’s express recognition that it has not fully defined the scope of the “cultivated state” requirement.

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I’m sure that I’ll discuss footnote 8 next time that I teach the topic of “found property” in my 1L property law class.  In that note, the court makes clear that “the 1954 amendments … made seedlings found on other people’s land patentable.”  What if the discoverer was trespassing?

58 thoughts on “Incentivizing Discovery (rather than invention)

  1. 58

    Mr. Learn, If the SC is interpreting a statute to be consistent with the constitution, what is it doing?

    Here the SC say "use" included the activities of the patent owner in this case.  They described those activities to be placing the invention on-sale and in public use.  Now we have a congress that is seen to expressly allow that which the SC said in Pennock would retard the progress in the useful Arts.  And, it is your position that such a law is constitutional because congress has the power to retard the progress in the useful arts?

  2. 56

    No, Mr. Read, you are h*ll bent on ignoring what the SC actually said.  And, for pities sake, I am not the only own who believes Pennock is a constitutional case.  What happened, it is clear, is that they interpreted prior "use" to exclude bar an applicant himself from commercially using prior to filing a patent application.  Congress later enacted a grace period, as we know.  But the rationale for the interpretation is what I quoted.  To not interpret the statutes such would be to allow practices that would harm the progress in the useful arts.

  3. 55

    Heller, is every question of federal law to you a constitutional question?

    Why not?

    As you seem h3ll-bound to over-read a trace of authority to a statute all the way back to the constitution, and we both know that all federal law must be traced to the constitution.

    Stop being ridiculous.

  4. 53

    construing the statute

    construing the statute

    AND THAT”S ALL THEY WERE DOING. There was no “constitutional question” involved. They were EXPLICITLY only going so far as the statute.

    Learn to read. Learn to NOT over-read.

  5. 52

    Mr. Read, You really think that Story was making it all up, and talking for no purpose whatsoever?  

    They were construing the statute just as they said they were.

  6. 51

    No Heller, it is NOT saying to be consistent with the Constitutioanl mandate.

    That’s called over-reading. What it DOES say is that the statute is enough. THAT is ALL the authority that the Court needs. It says it is NOT going BEYOND the statute, because it does NOT have to go BEYOND the statute.

  7. 50

    Mr. Simple, Court says it is construing the statute …to be consistent with the Constitutional mandate.

    Again, what was that?  To allow one to commercially exploit the patented invention, withholding from the public the secret of how to make it, and then allowing him to apply for and obtain a patent that provides a further period of monopoly exploitation would to be to retard progress of useful arts.  That is what they said; and that is what they were construing the statues to require.

    You seem to pretend that the Supreme Court discussion about the constitutional requirements was mere fluff and dicta.  Let me assure you, it was the basis for the decision.

  8. 49


    Why do you think the quoted passage supports your point when it clearly does not? Do you really not see that the Court is depending solely on the authority of the act as written by Congress?

  9. 48

    Mr. dicta, since you repeatedly quote passages that support my point without understanding that they do support my point, I can only wonder at your reasoning ability.

  10. 46

    From Ned’s case of choice Pennock:

    “In the case at bar, it is unnecessary to consider whether the facts stated in the charge of the court would, upon general principles, warrant the conclusion drawn by the court, independently of any statutory provisions; because, we are of opinion, that the proper answer depends upon the true exposition OF THE ACT OF CONGRESS, under which the present patent was obtained.

    Ned, explain.

    The silence



  11. 45


    There is no such problem as the quote you fear to mention lays all the necessary authority that the Court said it needed.

    Not only are you violating your own offered citation on the danger of elevating dicta, you are violating a core judicial teaching of using the minimal level of jurisprudence (if a case can be decided without invoking a constitutional question, it will.

    You have provided ZERO backing for your position and you STILL have not addressed the direct words that the Court itself chose. You STILL lack substance in this discussion.

  12. 44

    Mr. Lacks, the problem you have here is that you are trying to ingore why the court ultimatedly held that the statutory prohibition on claiming prior use included an on-sale bar. 

  13. 43

    That’s not true. Because a Car can’t go without the wheels. A Scanner can not scan into a Computer without the connection to the computer. Just because they are machines, doesn’t mean they don’t compliment each other like software and a computer. Or that faxes can’t be on computers through Software, because they are. Although Software could never act as a wheel, it can drive a car.

  14. 42


    The actual words of the Court were presented to you FIRST.

    Not only was your “ratio decedendi” addressed (ALL law descends from or can be traced back to the constitution), you continue to simply ignore the actual words chosen and used by the Court that directly contradicts what you want the decision to say.

    You are attempting to whip up froth as a substitute for the actual meal.

  15. 39

    No, Ned, it is you that hides from the actual words chosen.

    You have not even acknowledged those words yet. Why not?

    Your car keeps on disgorging clowns. It’s funny but everyone knows it’s a joke. You are not even the feature act. Show that you have graduated clown school and address the actual words used by the Court instead of sticking your fingers in your ears and chanting.

  16. 37

    Mr. Heller, no it does not. It, of course, being the truth that you do not dare broach.

    You continue to evade. You have not addressed nor explained the actual words in and of themselves.

    Of course the constitution is involved as it underlies ALL US law. But you still must address the very words the Court itself used in its decision to identify the authority it used in its decision.

    There is no hiding under the big top.

  17. 35

    Poetic. But still evasive. Still not an answer or an explanation of what the Court directly stated in the quote you dare not mention.

    You over-read and under-read all at once, choosing what you like, but ignoring critical pieces that inconveniently expose you as a charlatan and a fraud.

  18. 34

    I have addressed the ratio decedendi any number of times.  It is you who refuses to accept it.
    Allowing one to commercially exploit while holding secret how to make the invention from the public and then later allowing him to obtain a patent retards the progress of the useful arts.
    That is the pith and essence of the case, its ratio decendendi.


  19. 33

    And neither do you Mr. Heller, as can be seen on the more recent threads wherein you violate the very source on holding/dicta differentiation that you introduced with your refusal to address the direct quote from that case regarding authority. Where you make one egregious mistatement of a case to suit your agendas, you are very likely to make others. And since you offer no rebuttal on point to that exact quote from the case, one can only reasonably assume that you have no rebuttal to that exact quote.

    As has been duly noted, your silence is deafening.

  20. 32

    Is the intent of this poorly worded statute actually to refer to the act of cultivating a batch of plants and the putative inventor then discovering, contrary to expectations, that one of them turned out to be not like the others due to a mutation? (And then reducing the invention to practice, if you will, by asexually reproducing it.) Is that what this poorly worded statute is all about?

    Plant breeders typically do expect (or at least they hope!) that their crosses will yield plants that are exceptional in one way or another. It’s those exceptional cultivars that plant patents are intended to protect.

  21. 31

    I’ve never had more than the most casual understanding of plant patents, and thank heavens the subject is glazed over on the Patent Bar exam. But I have wondered, and still wonder, how one can “discover” a plant “in a cultivated state.” It seemed to me that if someone cultivates a batch of plants, the person knows all the plants are there and can’t “discover” any of them. You plant five seeds and you get five plants–no “discovery” of a plant there. Is the intent of this poorly worded statute actually to refer to the act of cultivating a batch of plants and the putative inventor then discovering, contrary to expectations, that one of them turned out to be not like the others due to a mutation? (And then reducing the invention to practice, if you will, by asexually reproducing it.) Is that what this poorly worded statute is all about?

  22. 30


    Don’t listen to the second biggest baby on the blog. Let Ned QQ – Quit.

    He never answers your points anyway.

  23. 26

    Even I know that if you take the Acorns from very small or immature trees, what you’ll get is a small tree. Are you trying to Patent because you are claimng you have Dwarf Oak trees?

  24. 25

    I get what the decision was trying to do, but didn’t it butcher the plain language of the statute?

  25. 24

    Let’s discuss “property of all mankind” or “available to all mankind” concepts looking behind this phony product of nature exception. Let’s add to the facts the following, that the patent applicant files an affidavit or describes in the specification that all existing plants of the known plant variety have been destroyed, but he has preserved a large crop of seeds in his vaults. He tells the PTO that they will stay there unless and until he’s issued a patent.

    Can the government seriously deny the discoverer a patent on the grounds that the claimed plant is property of all mankind?

  26. 23

    get the idea that I advocate banning trade secret protection

    …from you.

    You advocated a “constitutional question” that you refused to limit to patents only (something to the effect of “I don’t see the word patents in Article I Section 8) and then used the time under trade secret protection in calculating the total protection time under the constitution.

    How else is anyone to take such incorporation of trade secrets into the constitutional question you yourself stated?

    The fact that you continue to dodge the question of how that constitutional question is directly affected by trade secret protection alone is just Ned being Ned.

  27. 22

    Moo, excellent point here.

    I am no expert on plant patents, but wouldn’t the patentee’s revenue would be from the selling the acorns or very small plants?

    But, assuming selling acorns in competition was infringement, there could be no infringement until the pirated oaks began issuing seeds, perhaps long after the patent expired.

  28. 20

    Congress apperantly does not agree with Ned Heller’s view on Trade Secrets. The House passed by voice vote the Foreign and Economic Espionage Penalty Enhancement Act of 2012, aiming to INCREASE maximum time penalty for
    15 to 20 years and INCREASE the maximum fine from $500,000 to $5 Million.

    Looks like we want to promote the non-promotion of the arts by weakening patents and strengthening trade secrets.

  29. 19

    The court will award a patent to the discoverer of a plant seedling hitheto unknown regardless of its utility

    It won’t award a utility patent.

  30. 18

    Another stellar performance for the PTO’s best and brightest. They love to tout those wins at the Fed. Cir. Keep up the great lawyering. You’re an inspiration to us all.

  31. 17

    Nice juxtaposition of articles.

    This one actually biased to extending patent coverage where it should not go (covering Products of Nature), and the guest professor thread wanting to deny patent coverage where it rightfully should be allowed (software technology and business methods).

    Who says Dennis Crouch has no sense of humor?

  32. 16

    White oak needs about 60 – 100 years to grow to an optimal harvesting age. So, the patent would have been granted on something that wouldn’t even start to generate revenue until decades after its expiration. As a practical matter, what benefit could the applicant reasonably have expected from the patent?
    Assume the patent had been granted and I, the evil infringer, start planting stands of patented white oak on my land. When my grandchildren start harvesting, who’s going to sue them on a patent that’s 50 years expired? Who’s even going to remember, or care?

  33. 15

    I guess the purpose of patents is to “protect” *actions* people can perform – eventually to make money.

    You would have guessed wrong. It is not just action alone (there is no sweat of the brow reward in patent land). The proper focus is on result. Repeatable result perhaps, but result nonetheless.

  34. 14

    But in common parance the two words are used interchangeably.

    corrected. The concepts remain vastly different.

  35. 13

    Not sure about that Reinier, but I do think I should have first read the Decision. Then I would not have been holding the wrong end of the white oak stick, when I wrote the comments above.

  36. 12

    Then there the bit about another past discussion that Ned has chosen to oops not see or want to talk about – Trade Secrets.

    (but why do people keep bringing up trade secrets…? Oh wait, that is Ned that is bringing up trade secrets (again). But Ned does not want to talk about those aspects of trade secrets that are just, well, too inconvenient for his agendas)

    Ready to outlaw trade secrets yet Ned? How can they be allowed to exist when they so clearly violate the constitutional question of limited times. When they so clearly violate the promoting the progress? Or are you just being a mind-numbed robot with no fricken idea?

    There is “quaint sensibility” running amuck here alright. Just not the “quaint sensibility” you think.

  37. 11

    Is there a distinction to be made between the discovery of a plant hiterto unknown, albeit a seedling, that has no obvious utility and the discovery of a special property of a particular plant, only two of which are known? The court will award a patent to the discoverer of a plant seedling hitheto unknown regardless of its utility but deny a patent to a discoverer of a special property of a particular plant, only two of which are known.

    Obviously the court has its policies blinders on. But then again, we are talking about the Plant Patent Act and not about utility patents. Awarding patents for useless plants in seedling form is the watchword at the Federal Circuit.

    (All that discussion about the patenting of the forests of the world is utter and complete BS.)

  38. 10

    Then there is the bit about denying a patent to the first to discover the special utility of two oak trees. This will only force the discoverer to keep the secret of the trees from the public as long as possible while he privately exploits its unique properties. So much for common sense and promoting the progress, and all that quaint sensibility that was rudely ingored by the wilfully blind court.

  39. 9

    The court is laughably inconsistent. It drones on and on that discovery requires invention. Then it acknowledges that discovered seedlings are patent eligible.

    What a joke.

  40. 8

    35 USC § 100(a): “The term “invention” means invention or discovery.”

    Art. 52 EPC: discoveries as such shall not be regarded as inventions.

    But in common parance the two concepts are used interchangeably.

  41. 6

    I guess the purpose of patents is to “protect” *actions* people can perform – eventually to make money. That is the true purport of the famous Cochrane v. Deener decision in 1876 (which was misunderstood as requiring a “machine or transformation”)

    Probably the single most famous patent decision by the German Federal Supreme Court is the “Red Dove” case. The patent was rejected because the breeding process was deemed not to be *repeatable*.

    I think it makes sense to require an *action* and to require it to be *repeatable*.

  42. 5

    As I understand it, the word “invent” comes from the Latin “invenire” meaning “to discover”.

    Did the good professor have to do anything at all (even a spot of observation and thinking) to “discover” that these two trees are in fact different from other trees, and different in a way that has non-trivial consequences. And did the patent application disclose to the public for the first time the difference and the significance of the difference, that the professor had “discovered”? And if it did, well then it would remind me (in a small way) of penicillin and streptomycin and other such cases.

    I don’t understand. Why does the professor “love” the two trees? Incidentally, how does one “love” a tree? Has everybody else always liked the two trees in question? Perhaps the professor loves them for the same reason that everybody else has always quite liked them: that they look so nice?

    That being the case, why should society reward the delusional professor with a 20 year monopoly? Methinks the good professor is simply amusing himself, poking fun at all patent experts.

    It is August. What can one write? Is Professor Crouch, in his turn, pulling our legs? Is anybody here being serious?

  43. 4

    invents or discovers-and-asexually reproduces …: isn’t that the way to read this?
    in this story (doesn’t matter where he found the trees) the would-be inventor didn’t actually DO anything inventive to bring the plant into being.

  44. 3

    I guess this is simply not true. Patent law does protect discoveries. They are prevalent in experimental fields like chemistry. Why are you misleading your students on this point?

  45. 2

    Really…growing in his front yard? Why make stuff up? If you knew anything about the issue, you would know that what was interesting here is that he FOUND the trees in another’s yard–and they were over 100 years old when found. Plus, patents asside, you diminish his ability to find a tree worthy of replication, if not patenting.

  46. 1

    Nothing like starting off with a little embellishment: “Professor Beineke loves the two white oak trees growing in his front yard. He loves them so much that he filed for patent protection

    Except they were not on his property at all.

    Not looking good on the objectivity meter with that start.

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