Academic

Oppenheimer on Plant Patents

By Lawrence Solum

Max Stul Oppenheimer (University of Baltimore - School of Law) has posted The 'Reasonable Plant' Test: When Progress Outruns the Constitution (Minnesota Journal of Law, Science & Technology, 2008) on SSRN. Here is the abstract:

As the world searches for new sources of energy, attention has focused on renewable sources, such as plants. One approach to motivating investments in new technology is to provide limited term monopolies through the patent statute. With the passage of the Townsend-Purnell Plant Patent Act (PPA) in 1930, the United States became the first country in the world to provide a form of patent protection for plants. At the time, Francis Crick was a student and James Watson had just celebrated his second birthday -- their discovery of the helical structure of DNA was more than twenty-two years in the future. Convinced that advances in agriculture deserved patent protection, Congress attempted to accommodate the core concepts of patent law to the technology of plant propagation that existed at the time, in essence defining a plant by its physical rather than genetic characteristics. This required bending traditional patent rules.

Developments in biotechnology since 1930 have been dramatic. Scientific advances have not only undercut the need for the special rules created by the PPA but have also created a trap, which may deprive modern inventors of protection for the development of novel plants. Moreover, while new applicants can avoid it, the owners of thousands of issued plant patents have fallen into the trap and cannot remedy the error unless Congress provides relief.

This article describes the enduring core principles of utility patent law and identifies those that posed special problems for the agriculture industry in 1930 and led to the adoption of a sui generis plant patent law. It then demonstrates that, although the statute which controls plant patents has not changed significantly since its adoption in 1930, changes in biotechnology have in effect rewritten the requirements for patentability in a way which renders most recently granted plant patents invalid. Finally, it demonstrates how future applicants can avoid the trap which has been created by advancing technology, and proposes changes in the statute which could save those patents already issued and, in the process, improve the examination of plant patent applications and provide stronger protection for the agriculture industry.

Full post as published by Legal Theory Blog on September 24, 2008 (boomark / email).