Don’t Judge a Plant by its Seed: GMOs and Patent Laws

Carlos Faraco
Dec 19, 2016

This post accompanies the Sci on the Fly podcast “Some love them, some hate them, some don’t care: GMOs.” That podcast mentions (at 8:50) three Supreme Court and federal court cases significantly impacting the research and development of genetically modified organisms (GMOs -- organisms whose genetic material has been modified through genetic engineering).

The idea here is to delineate the federal statutes and Court cases, particularly those regarding utility patents, that have affected how plants can be patented. Understanding these rulings will help you, a consumer, better digest many of the controversies regarding GMOs, especially as they relate to the rights conferred to companies and farmers. While reading this, please keep in mind that patent protections are granted to encourage private companies to invest R&D dollars to develop novel products for which there might not be sufficient government resources or funds to do so.


Plant Patent Act (PPA) of 1930

The first law in the United States to grant intellectual property rights to plant breeders, the PPA established patents rights for newly invented or discovered asexually reproducing varieties, but excluded tuberous plants (root vegetables) as the tuberous portion is used for food. In the context of the PPA the term ‘invented’ refers to a three step process. The plant must first have been developed (through selective breeding) or discovered, then it must have been isolated or identified, and lastly, it must have been successfully reproduced. Therefore, in order to acquire a plant patent under the PPA, an inventor must have reliably propagated an asexually reproducing plant they discovered or a known plant with particularly suitable and unique characteristics. The patent would then confer protections to the inventor for 17 years, allowing them to limit others from reproducing, selling, or using that particular plant variety.
 
Plant Variety Protection Act (PVPA) of 1970
 
The PVPA established protections for sexually reproducing or tuber propagating plants. Passing this federal statute was important as it granted inventors protections for seeds. In providing further protections for inventors, it also provided several exemptions, including: i) a farmer’s exception, which allowed farmers to save and sell patented seeds for use on their farm or for other farmers, respectively, and ii) a breeder’s exemption, which allowed breeders to use patented plants to develop patentable varietals.
 
The PVPA was amended in 1980 to allow patentability for some previously exempted plants. In 1994 it was further amended to allow patentability for F1 hybrids (first generation organism from two different parental types) and tuberous plants. The 1994 amendments also restricted the previously mentioned exemptions by: i) only allowing farmers to clean/save, but not sell, patented seeds, and ii) no longer allowing breeders to patent varietals form already patented plants.
 
Utility patents
 
By definition a utility patent (a.k.a, Title 35, Section 101) can be issued for any new invention which demonstrates usefulness, or utility. In the 1980 Supreme Court case, Diamond v. Chakrabarty, the Court ruled it acceptable to patent a genetically engineered bacterium capable of breaking down crude oil. Even though Diamond v. Chakrabarty dealt with genetically engineered bacteria, it set the precedent to patent any modified or created living organism, including plants, since such an organism was not naturally occurring.

Following the Chakrabarty ruling, the US Patent and Trademark Office (USPTO), in the 1985 Ex Parte Hibberd decision, declared that utility patents could be applied to plants. In the case of plants a utility patent can apply to the genetic engineering method, the genetic sequence being inserted, the resulting plant, any part of the plant which has been modified, and even the seeds. The decision to grant utility patents for plants gave inventors much broader protections, but placed further restrictions on potential users. In this case, for example, farmers and breeders would be prevented from saving patented seeds if the licensing agreement for those seeds stated such.

The test against the utility patent decision by USPTO came in a series of cases which escalated into a Supreme Court case in 2001, J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc. Pioneer claimed that J.E.M. Ag Supply, Inc. had infringed on its utility patent of a hybrid corn seed sold under license by purchasing and reselling those the hybrid corn seed bags without Pioneer’s authorization. J.E.M. Ag Supply, however, filed a counterclaim indicating that sexually reproducing (i.e., seeding) plants were not intended to be covered under the broad scope of utility patents. They further maintained that patent protection for plant life was regulated by the PPA of 1930 and the PVPA of 1970 and therefore Pioneer’s legal claim and patents were invalid. The Court issued a decision in favor of Pioneer and indicated that while Title 35, Section 101 is broad, i) the 1980 Chakrabarty decision already concluded that living things are patentable and ii) while the PPA and PVPA set guidelines for patenting asexually and sexually reproducing plants, respectively, they are not exclusive in their scope and therefore do not exempt plants from utility patents.

The utility patent decisions by USPTO and the Court have ignited an extremely heated debate revolving around the basic rights to grow one’s own crop and reuse saved seeds for the next season; an agricultural practice which has been used for millennia. Even though utility patent protections on plants may be viewed as unacceptable by some, it is important to remember that patents have a limited shelf-life. They expire, like ultra-pasteurized milk. And, if deemed truly necessary for the public good, patent protections can be rescinded. Therefore, fear not, it is unlikely that a few large corporations with GMO utility patents are truly going to monopolize global food markets. In the meantime, you can decide with your dollars whether or not you support GMOs.

Carlos Faraco

Carlos is a neuroscientist whose academic work has primarily focused on developing novel human MRI methods to evaluate disease progression and incident risk in stroke and neurodegenerative disease patients. His current work as an AAAS S&T Policy fellow at the National Institute of Justice has focused on strategic planning and developing effective science communitcation strategies. He is also highly involved with Sci on the Fly as editor for the blog and executive producer for the podcast.

Disclaimer

This blog does not necessarily reflect the views of AAAS, its Council, Board of Directors, officers, or members. AAAS is not responsible for the accuracy of this material. AAAS has made this material available as a public service, but this does not constitute endorsement by the association.

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