Prior to the U.S. Plant Patent Act in 1930, plants could not receive patent protection. Like other products of nature, such as minerals or microorganisms, plants were excluded by statute or judicial review, relegated to the philosophy of a heavenly, not human, creator. However, one horticulturalist named Luther Burbank, who is credited with producing more than 800 varieties of new plants, is thought to be the inspiration that led to the Plant Patent Act, which is now codified in 35 U.S.C. § 161. While Burbank was never awarded a plant patent during his lifetime (though patents were awarded in his name posthumously), his efforts are why horticulturists today enjoy the possibility of patenting new plant varieties.
Not just any plant on God’s green earth may be protected by a patent. The Code stipulates four requirements: First, the new plant variety must be asexually reproduced, in a manner other than growing from seed (grafting, for example). Second, the plant must be distinctive, reflecting an unmistakable difference to other varieties, such as color, scent or growing conditions. Third, the plant must be novel, not already found in nature. Finally, the plant must be nonobvious, which is based on the same requirements for utility patents found in 35 U.S.C. §101. Tuber-propagated plants, such as the Irish potato and the Jerusalem artichoke, though asexually reproduced, are not patentable because the same part of the plant that is used to reproduce is sold as food.
One aim of the Plant Patent Act was to extend to growers the same incentives afforded to inventors, which is the idea that patent protection promotes public good by allowing inventors to safeguard their discoveries for a limited time against exploitation, thereby motivating continued financial and intellectual discovery.
Additionally, since 1970, horticulturists may protect new varieties under the Plant Variety Protection Act (7 U.S.C. § 2321), which certifies plants reproduced by seed; prior to 1970, reproducing new varieties uniformly by seed was challenging, but techniques have since improved.
A plant may also be protected by a utility patent, provided it is not naturally occurring. In this case, the plant must satisfy the usefulness, novelty, nonobviousness requirements of a utility patent.
But back to Luther Burbank, the horticulturist who spurred the Plant Patent Act: Burbank was born March 7, 1849 in Lancaster, Massachusetts, according to the Luther Burbank Home and Gardens website. Though not formally educated, at age 21, Burbank purchased land in Massachusetts with the goal of breeding plants. There he developed the well-known Burbank or Idaho potato. It is reported that Burbank sold the rights of the potato for $150. With the proceeds, according to the Encylopaedia Britannica article, “Luther Burbank: American Plant Breeder,” Burbank traveled to Santa Rosa, California, where he established a greenhouse and growing farms where he later developed the 800-plus plant varieties for which he is famous, including 113 varieties of plums and prunes, 10 varieties of berries, 50 varieties of lilies and the Freestone peach.
Burbank’s extensive work in horticulture genetics, his writings (for example, How Plants Are Treated to Work for Man), and his belief that plant breeding and production benefits from human ingenuity, is what many say spurred the 1930 Plant Patent Act. Burbank was granted plant patent numbers 12, 13, 14, 15, 16, 18, 41, 65, 66, 235, 266, 267, 269, 290, 291 and 1041 following his death, according to the ThoughtCo website article, “The Agricultural Innovations of Luther Burbank” by Mary Bellis, and he was inducted into the National Inventors Hall of Fame in 1986.
Interestingly, the person—Luther Burbank—who inspired the Plant Patent Act, which exempts potatoes because of their importance as a food source, is the same person who propagated the hardy Burbank potato that was exported from the United States to help Ireland recover from the horrific potato famine.