New York Times
March 12, 2001
AFTER agreeing last month to hear a dispute between two corn-seed companies struggling for economic advantage in the lucrative market for genetically engineered plants, the United States Supreme Court is preparing to settle whether such seeds should be awarded the kinds of patents that usually cover mechanical, electrical or chemical inventions.
Customarily, the court has supported a broad interpretation of federal patent law, but with key exceptions for inventions based on mathematical algorithms and products of nature. Under the current law, just about anything else is eligible for a patent if it meets invention requirements. But last year, the Supreme Court issued a ruling that shaved away at the exception for math algorithms, and some say that the court's willingness to hear the corn-seed case may indicate that it wants to take another look at the exclusion for products of nature.
That idea gained force from the court's having agreed to hear the case even though two lower courts had ruled that nothing in current law makes the kind of corn-seed inventions in question ineligible for what are known as utility patents.
The Supreme Court's consideration of the matter is likely to focus attention on the role of patents in what has become a fierce, often international political battle over scientific, environmental and health issues raised by genetically engineered crops.
The fight centers on the efforts of one company to protect 17 corn-seed patents that it says another company infringed by making and selling identical seeds. The company with the patents is Pioneer Hi-Bred International, a DuPont subsidiary and the world's largest producer of seed corn. When Pioneer sued J.E.M. AG Supply for infringing its patents, J.E.M. countersued, arguing that the patents should not have been awarded in the first place.
At the heart of that argument is the question the Supreme Court will take up: Are plants created from seeds eligible for utility patents? The two lower courts heard the case in 1998 and 2000, and said yes. For utility patents, federal law now says that any "new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof may obtain a patent."
In 1985, the Patent and Trademark Office declared that the law covered plants created from seeds. Thousands of plants and seeds have since won utility patents.
"I didn't expect the Supreme Court to take this case," said Jeff Craft, a Los Angeles intellectual property lawyer who specializes in biochemistry and life sciences. "The law is pretty clear, it's very broad, and I'd be surprised if the Supreme Court wanted to send a signal that they're cutting back on that."
On the contrary, he said, the court seems interested in reinforcing the broad scope of patent law by removing some of the limits set on math algorithms and natural phenomena.
"This may be another step in reinforcing the breadth of the patent law," Mr. Craft said. "That's the way the case proceeded in the lower courts with the seeds. The lower courts followed the signal set on broad interpretation." J.E.M. has argued that the utility category was not intended to include plants, since there are other regulations that govern plant inventions. The first, the Plant Patent Act of 1930, created a specific "plant patent" category, at a time long before genetic engineering technology, for plants reproduced asexually — that is, from means other than seeds. Plant patents cover plant mutations, hybrids or cultivars that might come from grafting, budding, layering or rooting techniques.
J.E.M. says another statute, the Plant Variety Protection Act of 1970, gives legal status to plants created from engineered seeds. It can endow legal status on sexually reproduced plants, but it does so outside the patent system. Inventors are awarded a certificate from the Department of Agriculture, instead. Its protection is less broad than that of a patent, and it carries exceptions to infringement that do not exist with patents. J.E.M. argues that Congress meant those two laws to be the only way to turn a plant invention into protected intellectual property. But Pioneer Hi-Bred — as well as the Justice Department, the Patent and Trademark Office and the lower courts — disagree. Now it is up to the Supreme Court.
While the fight reflects pieces of the growing controversy over genetically engineered organisms in farming and the food chain, the companies involved have not waged it to establish any doctrine on whether such seeds should be accepted.
Rather, it is another in the increasingly common, entrenched fights over the value of patents in a high-technology economy. Genetically engineered seeds are a critical part of business strategy for the handful of companies that dominate the American crop-seed industry.
Foreign sales of American corn and corn products exceed $1 billion a year. And any company that can lay exclusive claim to those products with patents stands to collect an increasing share of that revenue. That is why J.E.M. Supply and Pioneer Hi-Bred have pursued their fight to the Supreme Court. Genetically engineered seeds are those that have been doctored with genes from other organisms so they have desirable new characteristics — like generating their own pesticides or fighting off weeds. Genetic engineering involves breaking the DNA barrier to directly transfer plant and animal genetic material. Genes from human, animal, plant, bacteria, virus or other organisms can be inserted into another species. Specialists call the result a transgenic plant or animal.
But concern over such plants' impact on soil, pests, beneficial insects and people who eat the ingredients grown from them has alarmed some environmentalists and consumer groups, particularly in Western Europe. Some research has shown that seed toxins can leach into soils. Other studies contend that pollen from engineered corn can kill monarch butterfly larvae. Such opponents say that no one understands the long-term effects of these genetic manipulations. Supporters argue that seeds with antibacteria genes will reduce the need for insecticide use because they can be programmed to kill specific pests or weeds.
In spite of that controversy, Mr. Craft said he did not expect the Supreme Court to narrow the scope of utility patents.
"The economy has been robust, with rewards coming because of these technological advances, and that is especially primed to take off in the biotechnology area," he said. "I can't imagine the Supreme Court knocking the legs out from under that industry."
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Last Updated on 3/13/01