Somewhere in the near future…. government agent Troll stands on the broad side of a hill and views the brightly burning wheat in the valley below. As far as the eye can see, the fields of harvest-ripe grain are engulfed in flames, as Troll’s pyromanic troops – armed with a court injunction to stop patent-infringing plant growth immediately – dutifully destroy the autumn harvest crop of the patent-infringing clan of the Hungries. “That’l learn ‘ya,” yells Troll out loud to the fleeing Hungries, “patents rule the world, and don’t forget it”.
How did the status of the patent law reach that scenario?
The Patenting of Living Things – Granting Monopolies on Life Forms
The patenting of living things – as so many other patent areas – has gotten out of hand at the USPTO, as written up at the New York Tiimes by Michael Chrichton in Patenting Life.
Chrichton’s comments are contested at Patent Docs, but we find the latter unpersuasive and one-sided, as it takes an – in our opinion – pro-patent apologist position to dangers that others see, rather than tackling the hard issues of constitutional law, patent abuse and the fact that patents often create monopolies that in turn grant money and power to their holders which far outlive the length of the patent, to the detriment of the common weal.
Reach-Through Royalties Extend the Duration and Scope of Patents
Indeed, “reach-through royalties”, which can contractually bind the user of a patent far beyond the expiration date and scope of the patent, have become common. As written at the Wiggin and Dana Biotechnologly and Life Sciences Advisory, When Is A Reach-Through License Appropriate, BioInsights, April 2002, Issue 4:
“A reach-through license creates royalties to the research tool developer on the sales of products that are discovered or developed through use of the research tool, even though the patented invention is not incorporated into the final product, i.e., the manufacture, use and sale of the final product does not infringe any patents claiming the enabling tool. The recent proliferation of reach-through licenses has created controversy, with proponents arguing that reach-through licenses create incentives to further research tool development, while opponents claim that reach-through licenses extend the patent rights of the research tool owner, inhibiting dissemination, freedom of use and ultimately research and product development.“
See also the DOJ’s Variations on Intellectual Property Licensing Practices
and IP Handbook of Best Practices
Patent Monopolies Far Outlive the Actual Duration of Patents
As someone who has spent many professional years in the highly profitable monopoloy-and-patent-based pharmaceutical and chemical industries, it is not without reason that we wrote previously at LawPundit:
“One of the things that the political, corporate and legal establishment in the United States does not appear to appreciate is that patent monopolies, once granted, far outlive the actual duration of patents, and give the holders of those patents – on a silver platter – industrial empires which last centuries. The best example of that in Europe is the post monopoly of Thurn & Taxis, whose family, hundreds of years later, is still one of the wealthiest families in Europe.
Alexander Graham Bell’s patents were challenged something like 600 times during his lifetime, but his patent-based monopoly could not be shaken and AT&T (later known as “Ma Bell”) went on to control nearly the entire US telephone market, creating one of the most powerful monopolies of the modern business age.“
Patent Monopolies, Anti-Trust and the Federal Circuit
The purpose of the patent provision of the US Constitution was to enable inventors to profit fairly from their discoveries. The actual application of the patent provision of the Constitution by legislators and courts has led, by contrast, however, to the creation of economically harmful vast monopolies, which are characterized by all of the monopoly evils that laws such as the anti-trust laws were once designed to prevent, but which are ineffectual against patent-based monopoly power. Indeed, Robin Feldman, in Should We Breathe Life into Patent Misuse?, has written:
“In the last decade, the Federal Circuit has reframed the doctrine of patent misuse by prohibiting a finding of misuse without the application of antitrust law. This shift has all but eliminated patent misuse as a live doctrine, separate from antitrust. The Federal Circuit’s approach is inconsistent with legislative and judicial precedent and threatens to distort both patent and antitrust law.“
Marcia Coyle at The National Law Journal on October 19, 2006 wrote about the heart of the problem in Critics Target Federal Circuit: Reversals cast patent court in harsh light. Our own criticism of the overly pro-patent, seemingly insular Federal Circuit certainly mirrors what Coyle writes in that article, for example:
“With the recent Senate confirmation of Judge Kimberly Moore, the court now has a full complement of 12 active judges….
Last year, before she became a Federal Circuit judge, Moore, in an empirical study of district court reversals, reported the reversal rate, eight years after the Supreme Court ruling, was rising instead of declining as judges got more experience with claim construction.
The fault, she wrote, rests with the Federal Circuit, which was not providing sufficient guidance: “There have not evolved any clear canons of claim construction to aid district court judges, and in fact the Federal Circuit judges seem to disagree among themselves regarding the tools available for claim construction.” “
Coyle quotes Timothy R. Holbrook about the US Supreme Court and the Federal Circuit:
““I think the Supreme Court has started to pay attention to patent law for two reasons: disquiet with the Federal Circuit and also because patent law and patent reform are so on the radar screen,” said patent scholar Timothy R. Holbrook of Chicago-Kent College of Law.“
Coyle writes further:
“There have been two major recent studies of the patent system that noted problems, as well as patent reform proposals introduced in Congress, said Holbrook. On the “disquiet” reason, he said, “everyone thinks the Federal Circuit is pro-patent.”
Bioengineered Bacteria and the Plant Patent Case
One of our “unfavorite” cases in patent law is the “unobvious” Federal Circuit decision in Pioneer Hi-Bred International, Inc. v J.E.M. Ag Supply, Inc., 200 F.3d 1374 (Fed. Cir. 2000), affirming Pioneer Hi-Bred Int’l, Inc. v. J.E.M. Ag Supply, Inc., 49 U.S.P.Q.2d 1813 (N.D. Iowa
1998)) (you will have to register for free at FindLaw to read this case at that link)
That case upheld the validity of a patent for plant seed. The “Pioneer Plant Patent Case” has led to foreseeable monopoly practices in seed corn sales some years later. The case was taken by certiorari to the US Supreme Court and unfortunately affirmed there 6-2 in J.E.M. Supply v. Pioneer Hi-Bred International, 534 U.S. 124 (2001), through a majority opinion authored by Justice Thomas who observed:
“Pioneer sells its patented hybrid seeds under a limited label license that provides: “License is granted solely to produce grain and/or forage.” … The license “does not extend to the use of seed from such crop or the progeny thereof for propagation or seed multiplication.” … It strictly prohibits “the use of such seed or the progeny thereof for propagation or seed multiplication or for production or development of a hybrid or different variety of seed….
Relying on this Court’s broad construction of 35 U. S. C. § 101 in Diamond v. Chakrabarty, 447 U. S. 303 (1980), the District Court held that the subject matter covered by § 101 clearly includes plant life….“
Justice Breyer in dissent wrote about Chakrabarty, a case about bioengineered bacteria and not about plant patents:
“Respondent and the Government claim that Chakrabarty controls the outcome in this case. This is incorrect, for Chakrabarty said nothing about the specific issue before us.“
Clearly, the issue was not “clear”, as alleged by Thomas, otherwise Breyer would also have been in the clear about it. As Thomas wrote in his majority opinion:
“The question before us is whether utility patents may be issued for plants pursuant to 35 U. S. C. § 101 (1994 ed.). The text of § 101 provides:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”“
Prior to the Pioneer Hi-Bred case, a plant seed had never before been found to be patentable by a higher US court.
One reason that seed-grown plants were not patented for the first 200 years of the existence of the United States was that it was not foreseen by the nation’s founders that plant seeds should fall under the patent clause. Why should they be patentable now? Reduplication is a process carried out by Mother Nature, it is not an invention of man. Man to this day has not invented a single seed – he has only retooled existing seeds as hybrids – by chance or by design, but the original seeds are not his invention and they are anticipated by the prior art of the Supreme Maker. No plant seed can violate basic genetic rules – these are predetermined.
Biogenesis is defined as: “[t]he principle that living organisms develop only from other living organisms and not from nonliving matter”.
35 U. S. C. § 101 provides that “compositions of matter” could be patented, and Justice Thomas described his view of Congressional intent in this regard as follows:
“This Court thus concluded in Chakrabarty that living things were patentable under § 101, and held that a manmade micro-organism fell within the scope of the statute. As Congress recognized, “the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions.” Id., at 313.“
The conception of a child through human seed is not an invention – or – according to the standard voiced by Justice Thomas, is it? Surely, according to the flawed reasoning in the Pioneer Hi-Bred case, it should be possible for a sperm bank donor to patent his donated semen – nothing is more “human-made” than that – and thus to obtain patent rights to the progeny of that semen. For why should a hybrid “plant” have any greater patent rights than a new “hybrid” human? Armies of “patented” human clones seem not far off the horizon of the future. And yet, these are not the kinds of “discoveries” that the US Constitution intended “to secure” by patent law.
A second reason that the plant varieties now being produced in our modern day were not produced in the first 200 years of the existence of the United States was because they were not obvious prior to recent developments in modern genetic science. It has only been possible to develop such varieties in the last several decades, because they are obvious now, given the state of the art of that new biotechnology. Hence, in our opinion, new genetically-engineered plant varieties are anticipated by modern genetic “prior art”, which makes them obvious per se and hence unpatentable. Judge Newman may be aware of “unobvious varieties” (her term) – we are not. As Breyer noted in his Supreme Court dissent in referring to the oral argument about the issue of obviousness in this case:
“See Tr. of Oral Arg. 26, 30. But see S. Doc., at 20-21 (suggesting little difference [between PVP certificates and plant patents] because patent office tends to find “nonobviousness” as long as the plant is deemed “new” by the Department of Agriculture).“
In that context, here is a question for judges and Justices to ask upon oral argument:
“The claim is that this plant seed is “unobvious”. If that is so, how is it that the alleged inventor came upon it now? Please describe the steps which led to this alleged discovery and why it was not made 10 or 50 or 100 or 200 or 2000 years ago. Is it “more obvious” in our biogenetic age than it was years ago, and why? Why should this now suddenly obvious and yet for patent purposes allegedly nonobvious plant seed be patented? For whose benefit?“
Hayden A. Carney, at Christie Parker Hale, “ENTER: Human-Made Inventions, Living or Not” Patent and Trademark Office Welcome Mat
Harold C. Wegner, Supreme Court Patent-Eligibility Lessons from the J.E.M. Case: From Seeds To Business Methods, Biotechnology Law Report. 2002, 21(1): 18-20. doi:10.1089/073003102317359808.
Kevin J. DUNLEAVY, Emerson V. BRIGGS III (2000), Tribunals uphold Patent Protection for Plant-Based Biotechnology Inventions in the United States and Europe, The Journal of World Intellectual Property 3 (4), 555–559.
doi:10.1111/j.1747-1796.2000.tb00142.x (paid subscription or online purchase required)
The Oyez Project, J.E.M. Supply v. Pioneer Hi-Bred International, 534 U.S. 124 (2001), available at: <http://www.oyez.org/cases/2000-2009/2001/2001_99_1996/>
(last visited Friday, November 23, 2007).