74 Am. U. L. Rev. 527 (2024).

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Abstract

In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., the Supreme Court held that new sexually reproducing plant varieties are patentable subject matter. This allowed breeders and seed companies to protect their intellectual property in new seeds by obtaining utility patents so long as they meet the other statutory requirements, such as enablement. Unlike other intellectual property protection for new plant varieties, utility patents require the patent disclosure to include enough information that a person of ordinary skill in the art could make and use the invention without undue experimentation. In In re Wands, the Federal Circuit established eight factors courts should consider when determining whether a patent disclosure satisfies enablement (the Wands factors).

Due to decisions such as In re Argoudelis in 1970 and Ex Parte C in 1992, the United States Patent and Trademark Office (USPTO) continues to allow utility patents covering new plant varieties to satisfy the enablement requirement with a biological deposit of a claimed seed (a “seed deposit”), regardless of the type of plant variety claimed; however, this trend does not adequately evaluate the difficulty associated with reproducing different variety types from a sample seed. This Comment examines whether a seed deposit is sufficient to satisfy enablement under the Wands factors for different types of plant varieties, concluding that a biological deposit of a claimed seed is insufficient for all but one commonly claimed variety—inbred varieties.

* Senior Technical Editor, American University Law Review, Volume 74; J.D. Candidate, American University Washington College of Law, 2025; B.S., Joint Computer Science and Mathematics, Harvey Mudd College, 2021.