Jenna Settino

April 15, 2002

I. Introduction

Percy Schmeiser, a Canadian farmer, grew canola on his land for 40 years.[1]  Like any good farmer he experimented with the crop and developed his own varieties, using his own seeds.[2]  A neighboring farmer started to plant Monsanto's patented canola seed in an adjacent field.[3]  Subsequently, the neighbor's Monsanto seed drifted onto Schmeiser's farm.[4]  A year later, Monsanto sued Schmeiser for over $250,000 for growing the patented canola seed without a license.[5]  Canada patent law made it illegal for farmers to reuse patented seed or to grow patented seed without signing a license.[6]  Although Schmeiser never intentionally grew the seed, he lost and was forced to pay Monsanto over $6,000 for licensing fees and over $47,000 in profits from his 1998 crop.[7]  Sadly, this story may become a reality in the United States after the U.S. Supreme Court held that corporations can patent seeds in J.M. Ag Supply v. Pioneer Hi-Bred International.[8]

II. J.M. Ag Supply v. Pioneer Hi-Bred International

J.M. Ag Supply, doing business as Farm Advantage, sold Pioneer Hi-Bred International's (Pioneer) patented corn seed without a license.[9]  Pioneer's license to use the patented seed covers the manufacture, use, sale, and offer for sale of the company's inbred and hybrid corn seed products.[10]  Although Farm Advantage was not a licensed sales representative of Pioneer, Farm Advantage resold the bags.[11]  Pioneer brought a complaint for patent infringement against Farm Advantage and several other corporations and residents of the State of Iowa who are distributors and customers for Farm Advantage.[12]  Pioneer claimed that selling their patented seed was patent infringement under section 101 of the Utility Patent Act, which forbids farmers from selling or saving seeds and planting them the following year.[13]

Farm Advantage denied patent infringement and entered a counterclaim of patent invalidity, arguing that Pioneer's corn plant patents are invalid because sexually reproducing plants are not subject matter within section 101 of the Utility Patent Act.[14]  Farm Advantage argued that "the Plant Patent Act (PPA) and the Plant Variety Protection Act (PVPA) set forth the exclusive statutory means for the protection of plant life because these statutes are more specific than section 101, and thus each carves out subject matter from section 101 for special treatment."[15]  Farm Advantage wanted plant patents to fall under the PVPA so farmers would not face patent infringement if they saved or sold the seed.[16]

Thus, the question before the Court was whether patent may be issued for plants pursuant to section 101 of the Utility Patent Act or did the PVPA set forth the exclusive statutory means for the protection of plant life.  The answer was disappointing.  On December 10, 2001, the U.S. Supreme Court held, 6-2, that plants may be patented under section 101 of the Utility Patent Act.[17]

III. The Majority Opinion

Justice Thomas wrote the majority opinion.  Justice Rehnquist, Justice Kennedy, Justice Souter, Justice Ginsburg joined, and Justice Scalia wrote a concurring opinion.[18]  Justice Thomas first looked to section 101 of the Utility Protection Act.[19]  The text of section 101 provides: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefore, subject to the conditions and requirements of this title."[20]  Justice Thomas and the majority believed that the section 101 of the statute should be given a broad reading because of what the Court held in Diamond v. Charkrabarty.[22]

In Charkrabarty, the Court stated that "the subject -matter provisions of the patent law have been cast in broad terms."[22]  Thus, the Charkrabarty Court held that live, human-made microorganisms are within the scope of subject matter under section 101 of the statute.[23]  As a result, of this broad reading, the Pioneer Court believed that plants were within the subject matter of section 101.[24]

By contrast, the issue in Charkrabarty was whether a man-made bacteria could be patented under section 101 of the Utility Patent Act, not plants.[25]  Justice Breyer in his dissent writes, "whether a bacterium technically speaking is, or is not, a plant, the Pioneer Court considered it a 'life form,' and not the kind of 'plant' that the two specific statutes had in mind."[26]  In fact, the PVPA specifically excluded bacteria, and the Court of Customs and Patent Appeals had held that bacteria were not plants for purposes of the Property Protection Act (PPA).[27]  Because the PVPA and PPA do not consider bacteria to be plants, the Charkrabarty Court had no other choice but to give section 101 patents to bacteria.  Therefore, the Charkrabarty Court did not decide the issue of whether section 101 of the Utility Patent Act was applicable to plants or seeds.

Additionally, the majority relied on a 1985 U.S. Patent and Trademark Office (PTO) decision that followed Charkrabarty.[28]  The PTO held that plants were within the subject matter of section 101 in Ex Parte Hibberd.[29]  Thereafter, the PTO has had a practice of giving utility patents to plants when a plant breeder shows "that the plant he developed is new, useful, and non-obvious."[30]  Using the above requirement, the PTO has issued over 1800 plant patents in 16 years.[31]

An underlying reason why the Court discussed the PTO's decision to issue over 1800 patents is because of agribusiness.  Changing the way PTO system of giving utility patents to plants would cause enormous damage to investments made in the past 16 years.[32]  If the Court ruled in favor of Farm Advantage, the Court would have to rescind more than 1800 seed patents, which would not sit well with agribusiness.[33]  Agribusiness is an entity that has hundreds of paid lobbyists in Congress and has put millions of dollars into the Democratic and Republican House and Senate campaigns.[34]  Additionally, Justice Thomas worked in agribusiness when he was an attorney for Monsanto, a multimillion-dollar seed corporation that owns several seed patents.[35]

The majority then rejected Farm Advantage's argument that Congress's intent was for plant patents to be covered under the Plant Patent Act of 1930 (PPA) and the Plant Variety Act (PVPA).  Justice Thomas and the majority took a literal meaning of the statute and concluded that the PPA and the PVPA did not expressly give the exclusive right to plant patents.  Justice Thomas writes, "Nowhere does the PVPA purport to provide the exclusive statutory means of protecting sexually reproduced plants."[36]  Therefore, the court believed that nothing prohibited section 101 of the Utility Patent Act from giving patents to plants.

IV. Dissenting Opinion

The dissent was in diametric opposition.  Justice Breyer, joined by Justice Stevens, held that "Congress intended the two more specific statutes [PPA and PVPA] to exclude patent protection under the Utility Patent Statute for the plants to which more specific Acts directly refer."[37]

In the dissent's discussion of the history of the PPA and the PVPA, it is clear that Congress intended these two statutes to be the exclusive means to patent plants.  In 1930, the PPA amended the Utility Patent Statute to give all plants a patent if an inventor proves the plant is "distinct, new, and on one or more occasions it must have been asexually produced."[38]  In 1970, Congress enacted the PVPA, which gave patent-like protection to plants reproduced by seed, and it excluded the PPA's requirement that a breeder have "asexually reproduced" the plant.[39]  Further, the PVPA required the seed variety to be new, distinct, uniform, and stable.[40]  The PVPA also created two important exceptions.  First, a farmer will not face patent infringement if he saves the seeds and plants them in future years.[41]  Second, the PVPA permitted the use and reproduction of a protected variety for plant breeding or other bona fide research."[42]  The Court's decision to grant utility patents to plants destroys these exemptions.[43]  Why would Congress write two statutes that are specifically geared towards plant patents, if plant patent could be issued under section 101?  Further, why would Congress write exceptions into the PVPA if they were just going to be ignored?

V. Conclusion

The Pioneer decision prohibits farmers from saving seed for next year's crop.  The decision conflicts with a ten thousand year-old custom, in which farmers have had the customary right to save, use, and exchange their seeds.[44]

Mitchell Scruggs, a Mississippi soybean, cotton, and wheat farmer has stated:

"It's a God given right that was passed on to us by our ancestors. It's never been disputed until now, when big corporations are misusing patents to take those rights way from American farmers. The reason they're doing this is to control all the food and fiber in the world. They do this by controlling seed."[45]

The cornerstone of US patent law has been the prevention of seed patenting. Thomas Jefferson, a farmer and plant breeder, thought that almost nothing exemplified individual freedom more than a farmer's right to save seed.[46]  Jefferson, who was also the drafter of the 1790 Patent Act stated:

"Inventions... cannot, in nature, be a subject of property. Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody. The exclusive right to invention [is] given not of natural right, but for the benefit of society."[47]

Clearly, the 1790 Patent Act drafters felt that patenting plants would not benefit society, because the word "plant" was struck from the Act.  The result was that saving seed was granted to plant breeders for over 190 years.[48]

Farmers right to save seed for the benefit of society was eroded last December when the U.S. Supreme Court decided seeds may be patented under section 101 of the Utility Patent Act.  Now it's up to Congress to look at the original intention of the PPA, PVPA and the Utility Patent Act.  Congress can correct the Supreme Court's decision by making a exception to the PVPA.  The exception should state: "the PVPA shall be the exclusive means by which certificate holders prevent unlawful reproduction of new varieties entitled to plant certificates under this Act."  In the alternative, Congress should carve out an exception to Title 35 of the Utility Act that gives farmers the right to save seed and the right of researchers to use plant varieties for research.[49]  The Court challenged Congress to change plant patent laws.  Now Congress has to meet that challenge.  If they don't, U.S. farmers could be faced with lawsuits similar to Percy Schmeiser.

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[1] Actionaid, Crops and Robbers, at http://www.actionaid.org/resources/pdfs/bio.pdf (last visited April 8, 2002).

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 122 S.Ct. 593 (2001).

[9] Id.

[10] Id.

[11] Id.

[12] Id.

[13] 35 U.S.C. § 101. See also Robert Schubert, Mississippi Farmer fights Monsanto, Cropchoice.com, at http://www.oranicconsumers.org/monsanto/savesseedsuit.cfm (April 2, 2001).

[14] Id.

[15] Pioneer, 122 S.Ct. at 597.

[16] 7 U.S.C. § 2543.

[17] Pioneer, 122 S.Ct. 593.

[18] Id. Justice O'Connor recused herself because the case involved Dupont, a company in which she and her family have a fiduciary relationship. International Center for Technology Assessment, ICTA analysis of Supreme Court decision in patent case, CropChoice.com at http://www.cropchoice.com/leadstry.asp?recid=540 (December 19, 2001).

[19] Pioneer, 122 S.Ct. at 597.

[20] 35 U.S.C. § 101.

[21] Diamond v. Charkrabarty, 100 S.Ct. 2204 (1980).

[22] Id. at 2211.

[23] Id. at 2204.

[24] Pioneer, 122 S.Ct. at 598.

[25] Id.

[26] Pioneer, 122 S.Ct. at 607.

[27] Id.

[28] Ex parte Hibberd, et al., 227 U.S.P.Q. 443 (1985).

[29] Id. See also International Center for Technology Assessment, supra note 19.

[30] Pioneer, 122 S.Ct. at 598.

[31] Id. at 605.

[32] Glypohsate News, Victory for Seed Companies at the Supreme Court, FarmSaver.com, at http://www.farmsaver.com/new_december_2001.asp (December, 2001).

[33] International Center for Technology Assessment, supra note 14.

[34] Schubert, supra note 13.

[35] Glyphosate News, supra note 32. It is unclear why Justice Thomas did not recuse himself because of this conflict of interest.

[36] Pioneer, 122 S.Ct. at 601.

[37] Id. at 607.

[38] Id. The Plant Protection Act specifically stated, "Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who was invented or discovered and asexually reproduced any distinct and new variety of plantÖmay obtain a patent therefore."

[39] Pioneer, 122 S.Ct. at 610. See also 7 U.S.C. §§ 2402, 2483.

[40] 7 U.S.C.A. § 2402.

[41] Pioneer, 122 S.Ct. at 610.

[42] Id.

[43] Id. at 611.

[44] India Together, Who really owns seed?, India Together, at http://www.indiatogether.org/agriculture/articles/twn-seed.html (September 2001).

[45] Schubert, supra note 13.

[46] Glyphosate News, What if Our Nation's Food and Fiber Were Controlled Through Patents, FarmSaver.com, at http://www.farmsaver.com/news_august_2001.asp (August 2001).

[47] Thomas Jefferson on Politics and Government, Thomas Jefferson to Isaac McPherson, ME 13:334 (1813), available at http://etext.lib.virginia.edu/jefferson/quotations/jeff1320.htm (last visited April 8, 2002).

[48] Glyphosate News, supra note 46.

[49] International Center for Technology Assessment, supra note 19. (Rodney Nelson suggested this addition to the statutes in a letter to North Dakota Senators Dorgan and Conrad and Rep. Pomeroy).