protect by patent any new and distinct variety of asexually reproduced plant other than a tuber-propagated plant and other than a plant which reproduces itself without human aid.

This office is in full sympathy with every effort made to aid agriculture and horticulture, and if the patent laws can be amended in any way to accomplish this end the office is anxious to cooperate. For many years past patents have been granted for methods of grafting, etc., but the present patent law does not make it possible to grant patents for plants asexually reproduced.

The amendment to section 4886, Revised Statutes, as proposed by S. 3530, provides (1) that a patent may be granted to anyone who has invented or discovered any new and distinct variety of asexually reproduced plant (with certain exceptions) and (2) to anyone who finding an "already existing" plant reproduces the same asexually.

However sympathetic I am with the purpose of the proposed changes in the statute, I am constrained to suggest the possibility that in passing such a bill Congress may be exceeding the powers granted by the Constitution. This is particularly so with respect to the proviso at the end of the bill, which permits patents to be granted covering item No. 2 above referred to for a "thing already existing" when reproduced asexually.

The Constitution (Art. I, sec. 8) gives to Congress the power to grant exclusive rights to only two classes of persons, namely, authors and inventors.

The courts have uniformly held that a valid patent can be granted only for an invention. In the case of Thompson v. Boisselier (114 U. S. 1) the Supreme Court of the United States said that the beneficiary under the provisions of the Constitution must be "an inventor and he must have made a discovery," and further, that the thing for which he seeks a patent must "under the Constitution and the statute, amount to an invention or discovery."

A full discussion of the question with reference to what is a "constitutional invention" is found in the decision of the Circuit Court of the District of Columbia in the case of In re Kemper, MacArthur's Patent Cases, page 1, written in 1841 by Justice Cranch.

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It may be doubted whether a valid patent can be granted for a plant even if it is a new variety, when that plant is reproduced by operation of nature, aided only by the act of the patentee in grafting it by the usual methods, and a very serious question arises as to whether the definition given to the words "invention" and discovery" in the proviso in the bill, namely, that they shall be interpreted "in the sense of finding a thing already existing and reproducing the same as well as in the sense of creating," does not go beyond the power which the Constitution grants to Congress. Under that proviso the person who is given the right to get a patent, if the found variety is new, has done nothing whatever in any way toward creating that variety. In fact, under this proviso any one "finding" a plant a half a century old could, if he is the first to asexually reproduce one like it merely by the usual grafting methods, obtain a patent and prevent anyone else from likewise asexually reproducing that plant from a cutting taken from the original plant.

It is thought that this question of constitutionality should be very carefully considered by the congressional committees.

If the proviso were omitted, it is true that it would not carry out all of the purposes of the proponents of the bill as set forth in certain literature which has been submitted to this office, since it would not encourage our citizens generally to be on the lookout for varieties produced by natural processes; that is, by nature's accidental cross pollination of two varieties of any given plants. It would, however, lend encouragement to agriculture in that it would stimulate plant breeders, nurserymen, and horticulturists to new efforts in producing new and useful varieties when such varieties are created, for example, by cross pollination resulting from human efforts as distinguished from the accidental cross pollination not caused by human efforts.

In view of the doubt above expressed, it is strongly urged that instead of amending section 4886, Revised Statutes, which is the present fundamental patent statute and the basic authority for the present granting of patents, the proposed amendments should be presented not as a substitute for but merely as supplemental to section 4886, and phrased, for example, by stating that subject to the provisions of sections 4886 and 4887, Revised Statutes, a patent may be granted to a person who has invented or discovered any new and distinct variety, etc., following the language of S. 3530. (See the bill hereinafter suggested.)

If this course is followed, and the new act or any part thereof should eventually be held unconstitutional, it would in no way endanger or affect the validity of present section 4886, Revised Statutes, our fundamental law.

I should further suggest that the passage of this bill will undoubtedly create many administrative difficulties. If it does what its proponents believe it will, a large number of patent applications would be filed in this office, which would add a great amount of work, entailing larger appropriations. Further, and more important, there at once arises the difficulty of defining in a written document which must be printed, both as constituting part of the patent and as constituting a publication available for search and distribution, the differences which identify a new variety from previously known varieties. For example, if that difference exists only in the color of the bloom, then in order to describe that difference it would seem that a colored print of some sort would have to constitute a part of the patent.

If it is not possible by ordinary descriptions of the physical qualities of the plant, or the fruit, or the bloom, or all three, to so accurately define this new variety that it can be differentiated from all known varieties and from all subsequently created new varieties, then it is difficult to see how a patent to be granted would comply with the other provisions of the statutes, namely, that the inventor must describe his invention in full, clear, concise, and exact terms. (R. S. 4888.)

In other words, section 4888, Revised Statutes, requires one who obtains a patent to file in the Patent Office "a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same.'

In many instances (if not all) it may be found that no description could be written that would enable any one to identify so as to reproduce from that description (without the extraneous aid of physical cuttings or slips grafted in accordance with the usual methods) the new variety, as the only way asexually reproduced varieties can be reproduced is from a physical cutting or slip from the new variety itself. To state the matter in another way, if after the new variety were produced, and then reproduced asexually, an application for patent was filed with the most explicit description that it is possible to furnish, and all the plants containing such a new species were destroyed, as for example by fire, then there would be no way whatever of reproducing this new species. The written description filed in the Patent Office would be useless and hence could not satisfy the conditions of section 4888, Revised Statutes.

In view of the foregoing it may be found advisable to add an additional section 3 somewhat as follows:

"SEC. 3. That with respect to patents granted under the provisions of this act they shall not be declared invalid on the ground of noncompliance with section 4888 of the Revised Statutes where the description is made as complete as is reasonably possible."

It is also suggested that in order to avoid any doubt as to the scope of the protection that a patent of this kind would give to the patentee, the bill should provide that the grant of the exclusive right to make, use, and sell, as provided for in section 4884, Revised Statutes, should be construed to cover the reproduction of the plant. This suggestion is made because the word "make" in the statute is usually understood to mean the construction by human activity whereas these plants are reproduced by growth, a person only putting the graft or scion, for example, in such a position, in the tree to be grafted upon, that it will grow. In order to carry out the suggestions above made as to embodying the provisions in a separate bill, it is thought that this bill should be drawn to read as follows:

"A BILL To provide for the granting of patents on certain specified varieties of plants "Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That, subject to the provisions of sections 4886 and 4887 of the Revised Statutes (U. S. Code, title 35, sections 31 and 32), any person who has invented or discovered any new and distinct variety of asexually reproduced plant except a tuber-propagated plant and except a plant which reproduces itself without human aid, may, upon payment of the fees required by law, and other due proceeding had, obtain a patent therefor: Provided, That the words "invented" and "discovered" as used herein shall, in regard to asexually reproduced plants, be interpreted to include invention and discovery in the sense of finding a thing already existing and reproducing the same as well as in the sense of creating.

"SEC. 2. That in every patent issued under the provisions of section 1 of this act the grant of the exclusive right to make, use, and vend the invention or discovery as provided in section 4884 of the Revised Statutes (U. S. Code, title 35, section 40) shall be construed to include the right to reproduce the patented invention.

"SEC. 3. That with respect to patents granted under the provisions of this act they shall not be declared invalid on the ground of noncompliance with section 4888 of the Revised Statutes (U. S. Code, title 35, section 33) where the description is made as complete as is reasonably possible."

While the foregoing bill is submitted merely as an improvement in the form of the bill it must be understood that this bill is subject to the same comments regarding constitutionality as have been made with respect to S. 3530.

And, further, the recommendation is made that the proviso in section 1 be entirely omitted.

THOMAS E. ROBERTSON, Commissioner.

I have gone over this matter with the Commissioner of Patents, and as a result this new bill has been introduced, which I think meets all the objections of the Secretary of Commerce and the Commissioner of Patents. I do not think the committee desires to spend a great deal of time on the matter, and these gentlemen here can file briefs if they desire, but the committee would like to hear the Commissioner of Patents on this question.

Mr. PURNELL. Just one word in addition. Mr. Lee is here, and he is thoroughly familiar with the legal aspects of the bill and what has been attempted, or what we are attempting to do here.

The CHAIRMAN. You have no objection to the amendment that is proposed by Mr. Townsend?

Mr. PURNELL. Which provides that plants which have been introduced and have been on public sale prior to the approval of this act shall not be subject to patent? No; there is no objection to that going in there.

Mr. LANHAM. In other words, it is not the intention to make this retroactive.

The CHAIRMAN. Now, Mr. Commissioner, we will be glad to hear you.

STATEMENT OF THOMAS E. ROBERTSON, COMMISSIONER OF PATENTS

Mr. ROBERTSON. There is no objection, I will say, if the committee wants to do it, to this usual section, which is number 5 in the Senate bill, relative to the separability clause. If you want to put in the constitutional provision, there is no objection.

The CHAIRMAN. What you would like to do, Mr. Purnell, and what I think the committee would want to do, is to report out a bill here practically in the same language as it was reported out by the Senate? Mr. ROBERTSON. I would be delighted to have it the same way, if it meets the approval of the committee.

The CHAIRMAN. All right, Mr. Commissioner.

Mr. ROBERTSON. Mr. Chairman, I can only repeat what the Secretary of Commerce has said. The Department of Commerce and the Patent Office are in full sympathy with every effort made to aid agriculture. We did have some very serious objection to the bill as originally framed, but the bill as it passed the Senate has removed those objections. To remove the objection to the bill as it is now before you in the House, it would need, as Mr. Purnell has just suggested, the addition of section 5 from the Senate bill to this

bill. That would remove our objection and the fear that if, by any possibility this bill when enacted, should be declared unconstitutional, we do not want to run the risk of our fundamental patent statute being declared of no effect. Now, by putting in this section 5Mr. LANHAM (interposing). That is in the Senate bill?

Mr. ROBERTSON. That is in the Senate bill.

Mr. PURNELL. We have no objection to that.

Mr. ROBERTSON. Mr. Purnell has already said he has no objection. Section 5 is merely the reservation placed on many bills, reading as follows:

If any provision of this act is declared unconstitutional, or the application thereof to any purpose or circumstance is held invalid, the validity of the remainder of the act, and the application thereof to other purposes or circumstances, shall not be affected thereby.

In other words, we do not want, by having this part-the part which relates to granting patents on plants-incorporated in our fundamental patent statute and run the risk of that whole statute being declared invalid merely because of the presence of this one phase of it.

Mr. LANHAM. We could obviate that by simply reporting out the Senate bill, incorporating this amendment suggested by Mr. Purnell. Mr. ROBERTSON. Yes, that will remove the objection of the Patent Office, and as a matter of policy I think it would be well to adopt the phraseology that Senator Townsend suggested, and which was just suggested by Mr. Purnell, which will remove the objections of nursery men in the fear that plants already in existence might be covered by this bill.

Mr. LANHAM. This bill introduced in the House by Mr. Purnell is exactly the same as the Senate bill, except that it does not have section 5 included?

Mr. ROBERTSON. That is right.

Mr. LANHAM. Then if this bill were reported with section 5 of the Senate bill included, together with the amendments suggested by Mr. Purnell, which came from Senator Townsend, then that would fix the matter so far as the Patent Office thinks, in as good condition as it could be made?

Mr. PURNELL. And with the further suggestion, Mr. Lanham, that neither bill contains this additional suggestion, which is agreeable to both sides.

Mr. LANHAM. That is the one suggested by Senator Townsend? Mr. PURNELL. Yes.

Mr. LANHAM. I make the motion, Mr. Chairman, that we report this out favorably, adding section 5 of the Senate bill thereto, and also incorporating the amendment suggested here by Mr. Purnell. do not see any reason for prolonging the hearing, if the commissioner approves.

The CHAIRMAN. I will put the motion.

(The motion was put and carried.)

The motion is carried. The bill is reported. Mr. Purnell, the hearing is completed. We will adjourn until next Friday morning. (Whereupon, at 11.10 o'clock a. m. the committee adjourned until 10 o'clock a. m. Friday, April 11, 1930.)

ADDENDUM

House Report No. 1129, Seventy-first Congress second session

PLANT PATENTS

APRIL 10, 1930.-Referred to the House Calendar and ordered to be printed

Mr. VESTAL, from the Committee on Patents, submitted the following

REPORT

[To accompany H. R. 11372]

The Committee on Patents, to whom was referred the bill (H. R. 11372) to provide for plant patents, have considered the same and report thereon with amendments, and, as so amended, recommend that the bill do pass.

As to the two committee amendments, one adds to the bill the usual separability clause and the other eliminates from the scope of the bill patents for varieties of plants which were introduced to the public prior to the approval of the Act.

I. PURPOSES OF THE BILL

The purpose of the bill is to afford agriculture, so far as practicable, the same opportunity to participate in the benefits of the patent system as has been given industry, and thus assist in placing agriculture on a basis of economic equality with industry. The bill will remove the existing discrimination between plant developers and industrial inventors. To these ends the bill provides that any person who invents or discovers a new and distinct variety of plant shall be given by patent an exclusive right to propagate that plant by asexual reproduction; that is, by grafting, budding, cuttings, layering, division, and the like, but not by seeds. The bill does not provide for patents upon varieties of plants newly found by plant explorers or others, growing in an uncultivated or wild state.

STIMULATION OF PLANT BREEDING

To-day the plant breeder has no adequate financial incentive to enter upon his work. A new variety once it has left the hands of the breeder may be reproduced in unlimited quantity by all. The originator's only hope of financial reimbursement is through high prices for the comparatively few reproductions that he may dispose