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Article Excerpt
[This article examines the nature of the invention in intellectual property law. Taking the United States' Plant Patent Act of 1930 as its central focus, it explores the terms in which the compatibility of biological inventions with the modern paradigm of the invention was debated in the first part of the 20th century. The questions addressed in the debates leading up to the enactment of the Plant Patent Act of 1930--what kinds of plant qualified as patentable subject matter; what exactly did a breeder have to do in order to qualify as an inventor; and what was the relationship between the act of invention and the act of reproducing the invention--were ultimately questions about the consistency of ideas and the nature of manufacture, the answers to which are as pertinent today as they were some 80 years ago. We argue that in answering these questions, the traditional notion of the invention was redefined. Whereas traditional utility patents were based on the assumption that the only actor able to exercise agency in relation to the development of a novel invention was the human inventor, the regime of plant patents acknowledged that nature played a key role in the creation of new plant varieties. By altering the concept of agency that underpins the inventive process within patent law, plant patent law fundamentally changed the way that the invention was configured. In particular, whereas mechanical inventors were inventors at the beginning, breeders were inventors after the fact. At the same time, plant patent law also reversed the roles normally played by the participants involved in the creation of the invention. Under traditional patent doctrine, nature provided the material which was then shaped into an invention by the human inventor. In the case of plant patents, nature did the inventing, and the breeder was relegated to the task of identifying and then reproducing nature's creations. One of the consequences of this is that breeders did not create a new genetic principle--instead, they inductively appropriated a natural event. This changed the premise of invention--invention became an inductive rather than an originating act. Using the doctrinal requirement of enablement as a case study, we show how the reconfiguration of the invention had and continues to have important ramifications for the way that plant inventions, as with biological inventions more generally, are dealt with by intellectual property law.]
CONTENTS I Introduction II Mechanising Nature III Products of Nature IV Reproducing Nature V Disclosing Nature VI Conclusion
I INTRODUCTION
Although critical attention is more often directed to the role of patents in such things as stem cell research, pharmaceuticals or human cloning, an exploration of the geographical and historical trajectories of plant inventions remains a productive (and under-exploited) approach to the study of biological invention. Transgenic plants are the most widely travelled and cosmopolitan embodiments of biotechnological ingenuity. (1) They originate in the laboratories of agricultural biotechnology corporations and are exported to markets in diverse parts of the globe. Even the relatively minor displacement from the laboratory to the fields of North American farmers has raised difficult questions for intellectual property law. In Canada, for example, patents relating to transgenic plants cannot claim the modified plants as exemplars of a new variety; they can only claim the gene construct that confers the desired trait upon each plant. (2) As a result, courts have had to consider whether--or to what extent--a patent controlling the use and reproduction of the gene construct also controls the use and reproduction of the whole plant. (3) They have also had to consider how the respective contributions of biotechnological ingenuity and biological process should be quantified. What are the limits of 'manufacture'? The material substance of the plant is qualified by two distinct modes of creation and reproduction, and patent doctrine can only reconcile these principles of origin by recourse to crude pragmatism: to reproduce the plant is necessarily to reproduce the construct that it 'embodies'. So plant inventions--precisely because the patent effectively claims a whole organism rather than an isolated gene sequence or metabolic mechanism of action (4)--press home a question that is posed only implicitly or obliquely by other kinds of biotechnological invention: (5) where does natural process end and 'invention' begin?
Transgenic plants are not designed or bred entirely de novo: the basic technique of modification consists in adding a specific trait or competence to a variety produced by 'natural' processes of breeding and selection. (6) Commercial breeding programmes are dependent on access to genetic resources that are drawn from many diversity-rich parts of the world, often in the South, and which are maintained ex situ in public seed banks. (7) As a result, the agronomic value of elite varieties (in terms of yield performance) is essentially a function of their cosmopolitan nature--it is estimated that even the most genealogically uncomplicated variety will be composed of at least 30 parent lines. (8) Transgenic modification often adds nothing more than a protective packaging to this complex product. An elite variety produced by selective breeding has a typical lifespan of five to seven years, (9) which is about the amount of time it takes for species of insect or bacteria to adapt themselves to resistances bred into the variety. So plant breeders are engaged in continuous breeding programmes with the objective of finding ever new kinds of resistant strain. Biotechnology allows resistances to pests and diseases to be engineered into the elite variety, either by means of a gene that confers resistance to a specific pathogen, or to a proprietary herbicide or pesticide. So transgenic plants, including those that are protected by 'genetic use restriction technologies' ('GURTs'), merely bundle up the same cosmopolitan source lines that are found in conventional varieties, with the lines being drawn from either the public domain as it existed before genetic resources became subject to state sovereignty, or some sovereign jurisdiction. By what principle of accounting should one recognise these different contributions? To what extent do proprietary transgenic plants enclose essentially public resources? Legal instruments such as the International Treaty on Plant Genetic Resources for Food and Agriculture attempt to address these questions, (10) but their effectiveness is compromised by the fact that there are not only too many claims to ownership in play, but also too many conceptions of ownership.
The fundamental problem is that plant inventions--whether conventional or transgenic--compress diverse economic, cultural, and legal contexts. A single plant is an index to many different principles of origination, many potential owners, and many different modes of scientific or therapeutic knowledge. And biotechnology has played a leading role in this process of global expansion and cultural diffraction. The case of 'biopiracy' or 'bioprospecting' is a good illustration. In the classic form of bioprospecting, biotechnology corporations exploit indigenous ethnobotanical knowledge to identify plants with promising pharmaceutical potential. In the rare cases in which bioprospecting pays real dividends, the plants are reduced to chemical compounds and then packaged and patented as pharmaceuticals. (11) Natural products research, as a specific mode of biotechnological research, sets up a long and convoluted chain of relatedness between laboratory science and indigenous knowledge. Of course, bioprospecting practices were prevalent well before the rise of biotechnology, and it is arguable that these practices always generated new kinds of cultural mixture. (12) However, whereas these forms of cultural complexity could once have been externalised by the patent system, they now have to be absorbed into the doctrinal explanation of patent rights. (13) Bioprospecting not only forces different economies of knowledge into proximity, in doing so it also complicates the Western doctrinal conception of 'inventorship'. What is in question is not just the entitlement of indigenous peoples as the custodians or cultivators of the plant material, but also their entitlement as the 'authors' or 'breeders' of these plants. This kind of authorship cannot be easily explained in terms of the familiar Western conception of technical innovation or justified in terms of notions of economic and social utility; rather, intellectual property law must experiment with elements of authorship that are drawn from discourses such as human rights. (14)
What one sees in these examples is the diffraction of plants into a number of distinct legal entities, and although this process is driven by economic, political and technical forces that are specific to plant inventions, there is a sense in which these complexities express a tension that is common to all biological inventions. The lines along which plant inventions fall apart can be retraced to the basic doctrinal distinction between intangible and tangible, form and matter, or idea and embodiment. The contemporary complexity of plant inventions arises from the fact that the dimension of the intangible is diffracted into multiple principles of origination or authorship, which in turn divide the material form of the plant into multiple embodiments. In modern patent law, the distinction between the mental and the material was stabilised by a number of mutually-reinforcing manoeuvres: the reduction of the inventive idea to text; the separation of the dimension of the invention from the process of manufacturing and marketing; and the consequent reduction of material form to a mere embodiment of the invention. (15) The trouble with biological inventions is that they cannot be easily divided into such neat, mutually exclusive registers: the metabolic processes of living organisms cannot be reduced to anything resembling an engineering blueprint, so the inventive idea cannot be clearly delineated and distinguished from the process in which it intervenes. The idea is not reducible to text, but remains embedded in, and animated by, the tissues in which it is expressed, and as the Schmeiser decision suggests, it is impossible to say where the formative power of the idea ends and where natural biological process begins. Patent law may be committed to making the distinction between ideas and embodiments, but as a result, it is compelled to search within the texture of the invention for a dividing line that can ultimately only be a line of its own making. Hence, the endless diffraction of the invention itself.
In this article, we explore the question of invention and animate embodiments by retracing the historical--as opposed to the geographical--trajectory of patents for invented plants. To this end, we re-examine both the United States' Plant Patent Act of 1930, (16) and more generally, the historical period in which it was enacted, when, as now, the compatibility of biological inventions with the modern paradigm of the 'invention' was being explored. The questions addressed in the debates leading up to the enactment of the US Plant Patent Act of 1930--what kinds of plant qualified as patentable subject matter; what exactly did a breeder have to do in order to qualify as an inventor; and what was the relationship between the act of invention and the act of reproducing the invention--were ultimately questions about the consistency of ideas and the nature of manufacture, the answers to which are as pertinent today as they were some 80 years ago.
II MECHANISING NATURE
In historical accounts, the Plant Patent Act of 1930 is often presented as a kind of parallel to the scheme of utility patents--plant inventions were crudely compared with mechanical and chemical inventions, but the differences between manufactures and organisms were still too marked to allow the inclusion of plants in the general patent statute:
social agents failed in their attempts simply to amend the utility patent statutes to include plants. Instead, a sui generis statute was created, one which allowed lax descriptions of the invention, a liberal policy regarding discoveries, and no clear indication that the new plant variety constituted an improvement over existing ones. (17)
The Plant Patent Act of 1930 extended patents to plants, but it did so only by analogy, establishing a species of patent right that addressed plant inventions as exceptions or approximations to mechanical or chemical inventions. In this reading of history, the Act was eclipsed by the decision of the US Supreme Court in Diamond v Chakrabarty ('Chakrabarty'), which in a single act of judicial legislation expanded the system of utility patents to include living inventions. (18) The broad premise of the decision in Chakrabarty--that 'anything under the sun that is [novel and] made by man' (19) is patentable--implied that there was no longer any justification for excluding plants from the general patent system and sequestering them in the regime of patent rights or plant variety rights. (20) In response, the US Patent Office almost immediately started to grant utility patents in respect of plants, and it seemed that all prior objections to the patenting of plants and living organisms were either merely procedural or premised on an outdated technological vision: 'The questions that had been raised for decades over protection of plants were suddenly irrelevant for perhaps all living things.' (21)
In the US, the decision in Chakrabarty effectively curtailed fundamental doctrinal questions about the patentability of biological and biotechnological inventions. The formal legal question in the case (22) was whether a genetically engineered bacterium could qualify as a 'manufacture' or a 'composition of matter' within the terms of the US Patent Act of 1952. (23) Referring to the text of the Patent Act, which prescribes that patents might be issued for 'any new and useful process, machine, manufacture, or composition of matter', (24) a majority in the US Supreme Court held that the meaning of the four subject matter limitations was governed by the prefatory term 'any': 'In choosing such expansive terms as "manufacture" and "composition of matter", modified by the comprehensive "any", Congress plainly contemplated that the patent laws would be given wide scope'. (25) If inventions were, by definition, new and non-obvious, then patent statutes should be ready for the unknowable, and should employ the most expansive language: 'Congress employed broad general language in drafting [section] 101 precisely because such inventions are often unforeseeable'. (26) The effect was to direct attention away from the definition of manufactures--the question of what mode of action or origination was implied in the terms 'composition' and 'manufacture'--and towards the question of novelty. The US Supreme Court affirmed the novelty of an invention, rather than its mode of origination or reproduction, as the essential qualification for patentability. A 'new' organism was every bit as 'novel' as a 'new' machine.
The approach taken in Chakrabarty was affirmed in relation to plant inventions by J E M Ag Supply v Pioneer Hi-Bred ('Pioneer Hi-Bred'), (27) in which a majority of the US Supreme Court held that plant inventions were eligible for utility patent protection. Significantly, the counter-argument before the US Supreme Court was not that plants were not manufactures or compositions of matter, but rather that the passing of the Plant Patent Act of 1930 and the Plant Variety Protection Act of 1970 (28) expressed a congressional intent to exclude plants from the scheme of utility patents. There is a sense in which an investigation of the meaning of 'manufacture' or 'composition of matter' was barred by stare decisis, (29) but the conceptual and doctrinal force of the decision was an effect of something more than formal principles of interpretation. By holding that living organisms were eligible for patent protection, the decision in Chakrabarty gave rise to the idea that there was no categorical difference between organisms and manufactures, and hence no need to define the limits of 'manufacture'.
This is not necessarily true of jurisdictions outside the US. For example, the question addressed by the Supreme Court of Canada in Harvard College v Canada (Commissioner of Patents) (30) was almost exactly the same as that addressed by the US Supreme Court in Chakrabarty: namely, was a genetically-engineered organism--in this case, a mouse--a 'manufacture' or a 'composition of matter' for the purposes of the Canadian Patent Act? (31) Unlike its US counterpart, the Canadian Supreme Court held that although the inventor had invented and 'manufactured' the gene construct that was...
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