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[patentatt]

In 2002, the Supreme Court held* 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.

My question is: where does the requirement come from for the plant to be "newly developed"?

I don't see that requirement in sections 100, 101, 102, 103, or 112 - even though the decision overall holds that plants may be patented if they satisfy those sections.

Sections 100 and 101 seem to clearly state that patents may be obtained for inventions or discoveries.  Thus, it seems to me that a newly discovered, but not newly developed, plant could be patented accorded to the literal terms of the statute.

So where does the "newly developed" requirement come from?

And how does this issue affect cases like Prometheus and Myriad?

*J. E. M. AG SUPPLY, INC. V. PIONEER HI-BREDINTERNATIONAL, INC. (99-1996) 534 U.S. 124 (2001)
200 F.3d 1374, affirmed.

[dablueman]

In 2002, the Supreme Court held* 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.

My question is: where does the requirement come from for the plant to be "newly developed"?

I don't see that requirement in sections 100, 101, 102, 103, or 112 - even though the decision overall holds that plants may be patented if they satisfy those sections.

Thus, it seems to me that a newly discovered, but not newly developed, plant could be patented accorded to the literal terms of the statute.

35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

New means new. A "newly discovered" naturally occurring plant is not new, it just means that a botanist recently documented a plant that was as of yet undocumented by the scientific community, but that's been around. You're misreading the statute. Whether it is invented or discovered it must be a NEW process, machine, manufacture, or composition of matter.

It's invents or discovers, because some things are not intentional inventions but rather random discoveries (e.g. discovery of microwave cooking when Dr. Spencer discovered the candy bar in his pocket had melted).

DIAMOND V. CHAKRABARTY, 447 U. S. 303 (1980):

The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man." S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d Cong., 2d Sess., 6 (1952). This is not to suggest that § 101 has no limits, or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.

And how does this issue affect cases like Prometheus and Myriad?

It doesn't because it is not an issue.

[patentatt]

35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

New means new. A "newly discovered" naturally occurring plant is not new, it just means that a botanist recently documented a plant that was as of yet undocumented by the scientific community, but that's been around. You're misreading the statute. Whether it is invented or discovered it must be a NEW process, machine, manufacture, or composition of matter.

Your comments make sense on the surface, but they a raise a very difficult problem of evidence.

1. If nobody has discovered this plant before, how will the Examiner know that it is "new" or "old"?
2. In patent law, "new" is defined by section 102 art.  If the plant is just discovered, what 102 art is the Examiner going to use to reject the plant as old?
3. How does any Examiner know whether a plant is "newly developed" or "old but newly discovered"?  Do applicants for utility patents on plants generally volunteer "hey, we developed this plant use scientific breeding processes" or "we just discovered this plant but it was probably sitting there in the forest for the last 2000 years"?  What if applicants say nothing?
4. Do you have any experience with utility patents for plants?

And how does this issue affect cases like Prometheus and Myriad?

It doesn't because it is not an issue.

Why do you say that?  Prometheus and Myriad involve "natural" correlations that are, according to those attacking the patents, "God's handiwork", recently discovered, but not "newly developed".  So this issue (newly discovered vs. newly developed), broadly construed, seems relevant to those cases.

[dablueman]

1. If nobody has discovered this plant before, how will the Examiner know that it is "new" or "old"?
2. In patent law, "new" is defined by section 102 art.  If the plant is just discovered, what 102 art is the Examiner going to use to reject the plant as old?
3. How does any Examiner know whether a plant is "newly developed" or "old but newly discovered"?  Do applicants for utility patents on plants generally volunteer "hey, we developed this plant use scientific breeding processes" or "we just discovered this plant but it was probably sitting there in the forest for the last 2000 years"?  What if applicants say nothing?
4. Do you have any experience with utility patents for plants?

1-3, your questions assume the applicant and his attorney are going to violate their duty of disclosure and the attorney is willing to risk disbarment (I should also mention that some examiners have a duty to report to state bars too, so you're not just risking patent bar disbarment). I guess I assume you will meet at least the minimum ethical requirements. Also, while our lives may revolve around patent prosecution and what the examiner can find, there is a world beyond prosecution and it isn't limited to what the examiner can find and prove in 8-10 hours.

4. I won't go into details because I prefer anonymity so I'll just say I'm knowledgeable enough in botany, utility patents, section 161, and the plant variety protection office at the USDA.

Why do you say that?  Prometheus and Myriad involve "natural" correlations that are, according to those attacking the patents, "God's handiwork", recently discovered, but not "newly developed".  So this issue (newly discovered vs. newly developed), broadly construed, seems relevant to those cases.

Sorry I'm not seeing the connection you're trying to draw between plants and methods of treatments. I don't see an issue between newly discovered vs. newly developed in the prometheus and myriad cases (and I don't believe there is a 101 issue in plants either in terms of "new").

Has there been a way to determine the level of 6-thioguanine in a subject for "2000 years"? Did some tribe in the amazon know how to calculate the level in pmol per 8×10( 8 )? Have aliens known? If I discover an alien can I patent him, he's newly discovered right? If I can, then can I sue him for infringement for existing? Sorry to take it to this level of absurdity, but that's the logic extension of the incorrect reading of 101 found in the OP.

Naturally occurring phenomena are non-patent subject matter, always have been.

[patentatt]

1. If nobody has discovered this plant before, how will the Examiner know that it is "new" or "old"?
2. In patent law, "new" is defined by section 102 art.  If the plant is just discovered, what 102 art is the Examiner going to use to reject the plant as old?
3. How does any Examiner know whether a plant is "newly developed" or "old but newly discovered"?  Do applicants for utility patents on plants generally volunteer "hey, we developed this plant use scientific breeding processes" or "we just discovered this plant but it was probably sitting there in the forest for the last 2000 years"?  What if applicants say nothing?
4. Do you have any experience with utility patents for plants?

1-3, your questions assume the applicant and his attorney are going to violate their duty of disclosure and the attorney is willing to risk disbarment (I should also mention that some examiners have a duty to report to state bars too, so you're not just risking patent bar disbarment). I guess I assume you will meet at least the minimum ethical requirements.

What information do they need to disclose?  "I just found this in the forest"?

Should they submit that in a 132 affidavit?  How would be that material under rule 56?  Under what section of 102 would it constitute prior art?

Also, while our lives may revolve around patent prosecution and what the examiner can find, there is a world beyond prosecution and it isn't limited to what the examiner can find and prove in 8-10 hours.

In the hypo, the applicant is the first person ever to discover the plant.  Surely, that is not such an outlandish scenario - it's happened throughout the history of the human race, throughout the history of patent offices, and surely happens even today.  Thus, even if the plants are old, nobody knew about them and no reference shows that they are old.

4. I won't go into details because I prefer anonymity so I'll just say I'm knowledgeable enough in botany, utility patents, section 161, and the plant variety protection office at the USDA.

I didn't ask to undermine your credentials - I just asked because I honestly want to know how it works.

Do applicants volunteer statements like "I just found this in the forest"?  Or "we created this plant through selective breeding"?

Why do you say that?  Prometheus and Myriad involve "natural" correlations that are, according to those attacking the patents, "God's handiwork", recently discovered, but not "newly developed".  So this issue (newly discovered vs. newly developed), broadly construed, seems relevant to those cases.

Sorry I'm not seeing the connection you're trying to draw between plants and methods of treatments. I don't see an issue between newly discovered vs. newly developed in the prometheus and myriad cases (and I don't believe there is a 101 issue in plants either in terms of "new").

You should read Prometheus's petition for cert, which the Supreme Court granted.  It includes statements like:

"Those correlations already existed in the studied patient population. Prometheus simply analyzed patient data assembled by other parties to “discover” the levels it claimed were relevant."  "This correlation is unquestionably a natural phenomenon."  "These fundamental errors led the Federal Circuit to cobble together two well-known preliminary steps that were already part of the 'storehouse of knowledge,' and attach them to an admittedly insufficient mental step, to create a sprawling monopoly for Prometheus."  Etc.