Monthly Archives: May 2014

The Economic Basis for Limited Patentability of Life

In 1999, a farmer named Vernon Hugh Bowman went down to the local grain elevator and purchased soybeans headed for processing. Bowman already had plenty of soybeans back on his farm. In fact, many of the soybeans in that grain elevator may have been his. However, Bowman couldn’t replant the seeds from his harvest or even a fraction of them. His seeds contained patented genes developed by Monsonto, an agriculture supply company. Furthermore, as a condition for receiving the seeds, he had to sign a contract not to plant their offspring the next season.

And thus Bowman found himself buying back seeds from the grain elevator. These seeds would be contract and patent free, he reasoned, due to the first sale doctrine of patent law. Now he may be able to replant seeds every season from the season before, as farmers had done since the dawn of time. In addition, he told Monsanto what he was doing. Perhaps to spur on the lawsuit that followed. In the end, Bowman v. Monsanto made its way to the Supreme Court where in 2013 a unanimous finding ruled that the first sale doctrine didn’t apply to reproduced seed. This was little surprising given the precedent and reasoning from previous cases such as Asgrow Seed Co. v. Winterboer (1995), which showed that after two planting seasons a patent on plant genes or a plant variety would be worthless if the produced seed was not also the property of the patent owner.

Nevertheless, this bold, albeit illegal, assertion of farmer’s rights by Vernon Bowman was only a single battle in what has been a century long struggle between seed developers and farmers. It began in the early 1900s when plant variety developers wanted to be able to control the products of their labor once the plants were sold. This prompted proposals that plants should be patentable just as inventions were patentable. These were rejected because plants weren’t able to be described with the necessary accuracy that patent law requires (i.e. the written description requirement of 35 USC 112(a)). Furthermore, plants, especially plant varieties derived from natural breeding and selection, seemed to be products of nature, and products of nature were already excluded from patent law by court precedent (SAF, 2002).

Finally, in 1930 Congress decided that, while they may not be able to decide on the how all plant patents should be handled, one type of plant in particular lent itself to patenting. These were asexually reproduced plants. After all a piece of a plant cut off and replanted is essentially the same plant. Ownership likewise wouldn’t be hard to trace or follow. As a result the Plant Patent Act of 1930 (PPA) was passed, which gave patentablility to asexually reproduced plant varieties (with the exception of tuber reproduced plants, like potatoes) and relaxed the written description requirement of those patent applications as well.

Plant patents, however, were by no means utility patents. Instead they encompassed a separate and narrower spectrum of rights. Since patented plants at that time could not be described in terms of their genome, the appearance and traits of the plants, specifically the beneficial ones, were patented. Therefore, any alteration of those traits released the farmer or subsequent breeder from infringement. Likewise sexually reproducing the plant, that is planting or selling harvested seed, was not infringement since at the time it was thought that varieties could not reproduce true-to-type. Though many of these limitations on plant patents resulted from their inability to be fully described and misconceptions over the purity of reproduced seed, the rights of farmers to replant seed went largely unaffected. Indeed it was often cheaper to purchase asexually reproduced seedlings from commercial breeders than for the farmers to manage the duplication from clippings themselves.

Over the next 40 years, however, things changed. First it became abundantly clear that sexually reproduced plant varieties could reproduce true-to-type. Furthermore, a new type of plant development needed protection: hybrids. Commercial growers once again needed an extension of patent law. Now to be clear the PPA explicitly covered hybrids themselves if they could be asexually reproduced. However, the PPA did not cover those hybrid’s parents (the inbred lines) which were the essential intellectual property of the hybrid. Therefore, after much discussion and hearings with seed growers, developers and farmers, the Congress initiated the Plant Variety Protection Act (PVPA) which gave authority to the USDA to issue plant variety protection certificates (PVPC). The PVPA covered sexually-reproduced plants except for fungi, bacteria, tuber-propagated or uncultivated plants, and first generation hybrids (already covered by PPA). Furthermore, in addition to the specific plant exceptions, the law offered exceptions to reproduce proprietary plants for research purposes and for replanting by the farmer or sale by the farmer (so-called brown bag sales). While the plant variety development industry fought the farmer exception in court, stating that it undermined their entire business model, the USDA nevertheless received a LARGE number of PVPA applications, thus showing the economic benefit of the new law.

Then in 1980, Chakrabarty, a developer of micro-organisms for General Electric, attempted to patent a new bacteria which would breakdown and feed on crude oil, helping clean up environmentally disastrous spills. The US Patent office rejected the application for the patenting of a Pseudomonas bacteria with this capability as being unpatentable under 35 USC 101. The cited statute limits utility patents to useful processes, machines, compositions of matter and manufactured articles. The USPTO then defended this rejection to the Supreme Court where the case became Diamond v. Chakrabarty. At issue was whether Congress had anticipated that 35 USC 101 might encompass living things or whether the two previous plant patent act, the PPA and PVPA, were intended by Congress to be the limits and sole means of intellectual property protection for life.

The Supreme Court ruled in a close 5-4 decision that Congress had always intended broad interpretation of 35 USC 101 and that overlapping coverage between PVPA/PPA and utility patents did not imply exclusion of patents on living things from 35 USC 101. Furthermore, the Court quoted Congress in a legislative discussion of amendments to 35 USC 101 as saying patentable subject matter should “include anything under the sun that is made by man”. Since the bacterium was clearly a creation of man, the Court held that it was patentable.

The patent office’s argument was that the previous acts (PPA and PVPA) had been created to allow patenting of a limited scope of living things and wouldn’t have been necessary if plants were already covered by utility patents. The Court argued that the Plant Patent Act had been created to relax a written description requirement and was created with full knowledge that living things should be patentable. The PVPA was then enacted later to extend this coverage to sexually reproduced plants. After concluding that the two plant patent acts were simply enacted to aid the patenting of life (by lowering written description requirements and such), the Court then argued that the PVPA’s explicit exclusion of bacteria represented little more than an assumption that bacteria was covered under utility patents or that bacteria were not plants.

This dismissal of the importance of Congress’ exclusion of bacteria doesn’t hold up, however. First, the argument that bacteria were excluded because they had been patented before rings false. Did Congress anticipate overlapping coverage or not? If the Court can argue that bacteria were excluded because they were already covered then doesn’t that speak to a Congressional intent to have separate intellectual property domains under utility patents and PVPA? Additionally, plants had been patented before the passage of the 1930 Plant Patent Act. Yet Congress still saw it necessary to explicitly provide patentability. Secondly, the argument that bacteria were excluded because they were recognized as not being plants is on even shakier ground. Why then were some plants also excluded from the PVPA (namely tuber-reproduced plants and hybrids)? Why didn’t Congress also exclude animals, which are also not plants, since that issue was certainly foreseeable in 1970? Why did the Court see no issue with utility patents overlapping previous patent acts, when Congress had explicitly set non-overlapping boundaries for the PPA and PVPA?

Furthermore, if the purpose of the PPA and PVPA was simply to aid patenting of life why then restrict certain life from being “aided”? Such limits seem arbitrary if Congress intended that “everything under the sun made by man” should be patentable. Indeed these limits were far from arbitrary and instead delineated one of the clearest and finely-tuned sections of property law. What other property law resulted from over 50 years of back and forth demands and compromise between rights holders?

True, the Supreme Court regarded this as a narrow issue of whether a modified bacterium was an article of manufacture (i.e. made by man) under 35 USC 101. Many of these property rights issues were not even considered or only considered in passing. However, in simply trying to provide statutory construction for a single section of US code, the Supreme Court altered 50 years of explicit limits on plant patents—limits which preserved the rights to save seed, modify patented plants without infringement, and reproduce some patented plants for research.

It has become all too obvious in the 20th century that one property or human right usually ends or has its limit when it collides with another basic human right. Though perhaps more obvious in cases of nuisance or trespass, past jurisprudence increasingly looked to economics to solve these conflicts of property rights. Congress as a legislative body with popular representation and extensive hearings from industry representatives is best positioned to delineate property rights. However, in some cases the legislative intent is not clear or did not anticipate the issue being decided.

In the pages that follow I will attempt to reconstruct not only the Congressional intent and reasoning that gave the Plant Patent Act, the Plant Variety Protection Act and utility patents their respective limits but also the economic benefits and logic behind these very specific limits and exceptions. The dissent opinion in Diamond v. Chakrabarty was overall an argument that the explicit limits in the PPA and PVPA must mean something and concluded with some relevant economic repercussions. This paper is not so much a critique of the Supreme Court’s majority opinion but rather a call to Congress to develop a statutory framework that more explicitly defends the rights of farmers and researchers as already enshrined in the PPA and PVPA.

When it enacted the Plant Patent Act, Congress did more than simply amend the written description and explain that plants were patentable (as the Supreme Court has suggested). First, and most importantly, the PPA limited patentability to only asexually reproduced plants. This was done mostly because sexually reproduced plants were thought to not reproduce according to type. The bill also limited infringement to provable asexual reproduction. This meant that the first step to any plant lawsuit was establishing the chain of asexual reproduction (and therefore ownership) from the patented parent plant to the infringing descendants. Both of these limitations anticipated the costs of enforcement.

If a patented plant, one patented based purely on description, could change its characteristics via sexual reproduction how could infringement be proven (or more importantly disproven)? Furthermore, if said patented plant also reproduced sexually and was to come up in a future crop how could willful infringement be proven? Or even more fundamentally, what if a tuber-reproducing potato was left below the ground accidentally during harvest and reproduced asexually into another potato plant the next season? How could this infringement be proven? Rather than let the courts decide these difficult questions, Congress excluded these situations altogether with limitations to provable asexual reproduction of non-tuber reproduced plants. Essentially, these three statutory limitations in the PPA function to minimize enforcement costs and frivolous/misguided lawsuits.

Additionally, in enforcing the PPA the Courts held that any alteration of the patented plant removed the possibility of infringement. This was simply a by-product of the limitation of the PPA to asexually reproduced plants which inherently precludes alteration. However, the resulting case law allowed for low-cost development and research of new varieties based on already patented plants. This was essential for the steady progress of plant development which at the time required successive generations and iterative improvements (unlike current genetic engineering). This research “loop-hole” was later explicitly codified when Congress expanded the PPA to sexually reproduced plants under the PVPA.

When Congress decided to expand plant patents to include sexually reproduced plants through the Plant Variety Protection Act in 1970, it did so with even more limitations. First, Congress removed PVPA evaluation from under the US Patent Office and put it under the US Department of Agriculture. Second, certificates were issued, not patents. Besides similar protection term lengths, these certificates were very different from utility patents.

The requirements for patentability under the PVPA mirrored those inherent in asexually reproduced plants. The plant variety had to be new, distinct, uniform and stable. Furthermore, the PVPA provided exemptions to allow farmers to sell and save seed for replanting (the farmers exemption) while also permitting modifications without infringement (the research exemption). This preserved a long held farmers right to sell and replant seed from their crops. Economically this was essentially the same as a first sale doctrine since a farmer would no longer need seed after the first purchase and could also resell it thereafter (perhaps Bowman wasn’t that far off in his assumption). Furthermore, the explicit limitations prevented the inadvertent infringement lawsuits by allowing replanting and transfer of seeds.

The PVPA also explicitly excluded fungi, bacteria and tuber-propagated plants. In the case of each type, inadvertent infringement and therefore enforcement costs would be prohibitive. Fungi, for instance, reproduce both sexually and asexually in a variety of ways some of which resemble tuber-propagation. Their spores are microscopic making transfer impossible to witness. Likewise, bacteria present the same difficulties with the added problem that they can selectively transfer genes between each other. This would make even patented genes transferable without any reproduction whatsoever!

In the wake of Diamond v. Chakrabarty and the subsequent In re Hibberd ruling by the patent office, patents on life have changed dramatically. Plants, bacteria, fungi and animals are now patentable without limitation. Economics and human rights provide no support for the resulting marketplace. For instance, organic farmers who obviously aren’t willfully reproducing GMO seed were forced to sue Monsanto, a seed developer, to extract a promise that they would not be sued for inadvertent infringement. Farmers can no longer replant their seed. Indeed even replanting unpatented seed which may have cross-pollinated with patented seed in nearby fields would open a farmer up to infringement. Though Monsanto has wisely chosen not to expose these flaws in the current system by suing some hapless farmer, the system is nevertheless flawed.

When even weeds are obtaining the genes from patented plants, as in the round-up ready gene’s case, what are the “meets and bounds” of a plant patent? When the world is awash with patented bacteria which could be digesting oil in your bath tub, who isn’t an infringer? All property requires boundary lines and the stronger the property right the clearer that line should be. This is especially important when multiple rights are conflicting as farmers’ rights and seed developers’ rights are here. When boundary lines are left to promises not to sue, selective and arbitrary enforcement, and the direction the wind blows, the market takes on a significant social cost. This social cost is uncertainty. The plant patent paradigm in place between the PVPA and Diamond v. Chakrabarty drew these lines in effective and reasonable, though not the most profitable, places. We should consider the 50 years of struggle, compromise and limitations that gave us the PVPA before reconstructing patent law to include “everything under the sun”.