Jonathan Platt

Law is famous for producing head-scratching definitions, from the 1893 Supreme Court ruling that tomatoes are vegetables rather than fruits (for purposes of tariffs), to a 2022 California decision that bees qualify as fish (for purposes of the California Endangered Species Act), to an Indiana court’s recent order stating that tacos are sandwiches (but see a 2006 Massachusetts opinion going the other way, stating that “the term ‘sandwich’ is not commonly understood to include burritos, tacos, and quesadillas”). Patent law isn’t immune to such issues, as indicated by the question of whether mushrooms count as plants for purposes of patent protection.

The Hague Division of Europe’s Unified Patent Court (UPC) recently ruled that mushrooms are not plants, and are therefore eligible for utility patent protection in Europe. Article 53(b) of the European Patent Convention (EPC) explicitly excludes from patent protection “plant or animal varieties.” The European Union has a separate intellectual property right for new plant varieties, the Community Plant Variety Right (CPVR), which protects plant breeders’ rights for 25 years (for most varieties of plants). CPVR rights are available to protect new varieties of mushrooms, in accordance with the International Convention for the Protection of New Varieties of Plants, to which the United States is also a party.

The UPC case involved an attempt by a patent holder to obtain a preliminary injunction against an accused infringer of a European patent that claims a hybrid mushroom strain. The infringer argued (among other things) that the patent was invalid in that EPC Article 53(b), by excluding “plants,” thereby excluded mushrooms as being eligible subject matter for a European patent, especially in view of the CPVR being available for mushrooms. The UPC court disagreed, pointing to prior statements that Article 53(b) was to be construed narrowly, and even a statement from a 2017 proposal from the president of the EPO that the Article 53(b) did not apply to “fungi or yeast.” Thus there are multiple paths available for obtaining IP protection on mushrooms in the EU.

Similarly, under US law there are multiple routes for obtaining IP protection on plants and fungi. Foremost among these are plant patents, 35 USC 161 et seq., which protect asexually-reproduced plants, which include algae and macro fungi (like mushrooms), although tuber-propagated plants are specifically excluded from plant patent protection. There is also a separate species of protection available under the Plant Variety Protection Act, 7 USC 2402 et seq., that extends to sexually-reproduced or tuber-propagated plants; this IP right is administered by the Department of Agriculture. But under US law, there is no bar to obtaining a utility patent on a new plant, and a utility patent may represent the strongest IP protection available in the US for newly-developed plant varieties.