Supreme Court upholds patenting of genetically engineered plants

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The Scientist 16[2]:22, Jan. 21, 2002

NEWS

Payday for US Plant Scientists

Supreme Court upholds patenting of genetically engineered plants

By Peg Brickley

A Dec. 10 ruling from the US Supreme Court that validates patents on

genetically engineered plants re-ignited the debate over the politics of

property rights in the life sciences. In a case involving the leading

seed-corn producer, Pioneer Hy-Brid International Inc. of Des Moines, Iowa,

the Court endorsed the US Patent and Trademark Office's 1985 decision to

issue broad utility patents on plants.1 The patent office based its decision

on earlier rulings that " anything under the sun made by man " is patentable.2

But until the Court ruled on the Pioneer case, no one could be certain that

genetically altered plant patents would stand up.Decades of development in

plant genomics were riding on the decision, the results of which translate

into more research dollars for plant scientists. The ruling means the

products of their laboratories can claim as much as 20 years of monopolistic

protection under US patent law. Had the case gone the other way, plant

genomics research may have withered as investors halted funding because they

could not protect their profits.

Patenting Life

In 1980, the Court approved patents on {{{{manmade microbes}}}}}}, making it

clear that living things could be patented. Some lawyers still argued that

plants, as products of nature, could not. But patents were issued that

protected the living results of agricultural research, and private-funding

sources opened their wallets in support of these laboratory scientists.

Courtesy of Jeff Kushan

Jeff Kushan

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" This issue was decided 20-some years ago, and the impact can be measured in

what has happened in plant breeding over the past couple of decades, " says

Jeff Kushan, a partner in the law firm of Goldstein Frazer in

Washington, DC, which filed an amicus brief backing plant patents on behalf

of the US Biotechnology Industry Organization. The impact, he says, is that

companies such as Pioneer, which engage in agricultural genomics research,

have expanded classic plant-breeding practices to incorporate wider knowledge

of gene function. Investments in technology allow researchers to select and

combine specific genes to tailor-make new hybrids and varieties.

Some observers of the global debate over genetically modified foods say the

ruling emphasizes how distant the United States is from the rest of the world

when staking out property claims on living things. Outside the United States,

opponents to genetic engineering are gaining strength. One day after the

Pioneer decision issued, Greenpeace led a coalition of Mexican environmental

and farm groups in filing a formal complaint seeking to ban the import of

genetically engineered corn from the United States. " We see [the Pioneer

ruling] as a defeat for the international struggle to challenge the ethics of

patents on life, " says Anuradha Mittal, co-founder of the California-based

Institute for Food and Development Policy. " Patents create a monopoly that

threatens food security and the livelihood of farmers, " Mittal says.

" Chemical corporations have gone into the business of buying up seed

companies because that's the first link in the food chain. Whoever controls

the seed controls the world's food supply. "

The Supreme Court's decision allows Pioneer to enforce its corn-seed patents

against rivals in the global market, including J.E.M. AG Supply. The 17

utility patents at issue in the case represent a fraction of the 1,700

patents on plants or plant components jeopardized by J.E.M.'s argument that

plants could not be patented.

The International Debate

The US ruling does not apply to the European Union, which operates partly

under an advisory to member nations called the Biotech Patent Directive.3

" Essentially, you can't get a patent for a plant variety, but you can get a

patent for a genetically modified plant, a transgenic plant, provided that it

is not something that in itself is a variety, " explains Sheard, a

Hertfordshire patent attorney who heads the intellectual property advisory

committee of the BioIndustry Association, a UK trade group. " If your

invention is, generally speaking, something broader than a variety—let's say

a tomato plant that has a gene that allows fruit to ripen earlier—it may be

patentable, provided the other conditions are met. " The specific situation

presented by Pioneer Hy-Brid's plants may be a murky area in Europe. The

plants Pioneer patented were developed through classical genetic breeding and

are not, strictly speaking, " genetically modified organisms, " says Herb Jervis

, the firm's vice president and chief patent counsel. But Pioneer's breeding

techniques involve genomics research and development on which it spends from

$250 million to $300 million annually, notes Jervis. European legal circles

still debate the fine meaning of terms such as genetically engineered and

transgenic plants.

Biotechnology industry officials in the United States and Europe say that

some form of legal protection is necessary to support research, however. No

patents, no payday, as they see it. Foes say farmers have done agricultural

research without patents since time immemorial, creating the germ plasm used

in laboratories today. " They call it intellectual property, " Mittal says. " We

call it intellectual piracy. "

Peg Brickley (<A HREF= " mailto:pegbrickley@... " >pegbrickley@...

</A>) is a freelance writer in Philadelphia.

References

1. J.E.M. AG Supply Inc. v. Pioneer Hi-Bred International Inc., No. 99-1996

U.S. Supreme Court, Dec. 10, 2001.

2. Diamond v. Chakrabarty, 447 US 303 (1980).

3. Directive 98/44/EC of the European Parliament and of the Council of 6 July

1998 on the legal protection of biotechnological inventions, Official Journal

L213, 30/07/1998 p. 0013.

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The Scientist 16[2]:22, Jan. 21, 2002