I 

108TH CONGRESS 

2D SESSION H. R. 5253 

To make technical corrections in patent law. 

IN THE HOUSE OF REPRESENTATIVES 

OCTOBER 7, 2004 

Mr. ISSA (for himself and Mr. TOM DAVIS of Virginia) introduced the 

following bill; which was referred to the Committee on the Judiciary 

A BILL 

To make technical corrections in patent law. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Plant Breeders Equity 

5 Act of 2004’’. 

6 SEC. 2. FINDINGS. 

7 Congress finds that— 

8 (1) Since 1930, the Plant Patent Act has bene9 fited the public by encouraging innovation and devel10 opment of new varieties of asexually reproduced 

11 plants, including trees, shrubs, flowers, and fruit12 producing plants. 
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1 (2) The United States is a signatory to the 

2 International Union for the Protection of New Vari3 eties of Plants (UPOV) Convention; however, the 

4 plant patent system has not been modernized to in5 corporate important provisions of UPOV, placing 

6 breeders of asexually reproduced plants in a position 

7 of inequity with breeders of other types of plants in 

8 the United States and with foreign breeders. 

9 (3) Closer harmonization of the plant patent 

10 system with UPOV will restore equity and ensure 

11 continued innovation and development of horti12 cultural plant varieties. 

13 SEC. 3. AMENDMENTS TO TITLE 35, UNITED STATES CODE. 

14 (a) NOVELTY.—Section 162 of title 35, United States 

15 Code, is amended— 

16 (1) by striking the section heading and insert17 ing the following: 

18 ‘‘§ 162. Description, claim, novelty’’; 

19 (2) in the first undesignated paragraph, by 

20 striking ‘‘No plant’’ and inserting the following: ‘‘(a) 

21 DESCRIPTION.—No plant’’; 

22 (3) in the second undesignated paragraph, by 

23 striking ‘‘The claim’’ and inserting the following: 

24 ‘‘(b) CLAIM.—The claim’’; and 

25 (4) by adding at the end the following: 
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1 ‘‘(c) NOVELTY.— 

2 ‘‘(1) IN GENERAL.—Except as provided in para3 graph (2), no plant patent application shall be de4 nied, nor shall any issued plant patent be invali5 dated, on the grounds that the invention was sold or 

6 otherwise disposed of. 

7 ‘‘(2) EXCEPTIONS.—Paragraph (1) shall not 

8 apply if— 

9 ‘‘(A) more than 1 year prior to the date of 

10 the application for patent in the United States, 

11 the invention was sold or otherwise disposed of 

12 to other persons in the United States, by or 

13 with the consent of the inventor or discoverer, 

14 or the successor in interest of the inventor or 

15 discoverer, for purposes of exploitation of the 

16 invention; 

17 ‘‘(B) except as provided in subparagraph 

18 (C), more than 4 years prior to the date of the 

19 application for patent in the United States, the 

20 invention was sold or otherwise disposed of to 

21 other persons in a foreign country, by or with 

22 the consent of the inventor or discoverer, or the 

23 successor in interest of the inventor or discov24 erer, for purposes of exploitation of the inven25 tion; or 
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1 ‘‘(C) more than 6 years prior to the date 

2 of the application for patent in the United 

3 States, in the case of a tree or vine, the inven4 tion was sold or otherwise disposed of to other 

5 persons in a foreign country, by or with the 

6 consent of the inventor or discoverer, or the 

7 successor in interest of the inventor or discov8 erer, for the purposes of exploitation of the in9 vention.’’. 

10 (b) PLANT PATENT GRANT.—Section 163 of title 35, 

11 United States Code, is amended— 

12 (1) by striking ‘‘In the case’’ and inserting the 

13 following: ‘‘(a) IN GENERAL.—In the case’’; and 

14 (2) by adding at the end the following: 

15 ‘‘(b) APPLICATION.—Subsection (a) applies equally 

16 to any plant that is not clearly distinguishable from a pro17 tected plant.’’. 

18 (c) CONFORMING AMENDMENT.—The chapter anal19 ysis for chapter 15 of title 35, United States Code is 

20 amended by striking the item relating to section 162 and 

21 inserting the following: 

‘‘162. Description, claim, novelty.’’. 

22 (d) APPLICATION.—The amendments made by this 

23 section apply to— 
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1 (1) all applications for plant patents filed on or 

2 after the date of enactment of this Act, or pending 

3 on that date; and 

4 (2) in the case of the amendments made by 

5 subsection (a), all plant patents in force on the date 

6 of enactment of this Act. 

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