Intellectual Property Protection for Plant Innovation: Unresolved Issues After J.E.M. v. Pioneer

In December 2001, the U.S. Supreme Court confirmed that plants are eligible subject matter for protection under the utility patent regime, notwithstanding the existence of limited forms of intellectual property protection for plants under the Plant Patent Act (PPA) and the Plant Variety Protection Act (PVPA). As fundamental as the J.E.M. decision may be, the Supreme Court confronted only one relatively narrow issue of patent acquisition in J.E.M. It will now fall to the lower courts to work out how numerous other issues of patent law doctrine apply to plants, and to Congress to consider broader policy issues concerning the relationship among IP regimes for plants. In this article, we analyze the J.E.M. decision, identify issues that J.E.M. leaves unresolved, and explain how those issues have begun to manifest themselves in recent plant IP disputes. The J.E.M. case concerned an issue of patent acquisition, and so the Court had no occasion to comment on issues of patent scope and enforcement of patents on plant-related innovation. One such issue is whether patent infringement can occur as a consequence of pollen drift. In this case, we conclude that courts (and legislatures) would be well-advised to not craft a special infringement regime for patented plants. Seed saving by farmers raises issues that are analytically similar to those surrounding experimental use in patent law. Whereas the utility patent statute includes no express exemption from infringement for patented seed that a farmer saves and re-uses, the PVPA does include a narrow saved-seed exemption. Sellers can limit the scope of an implied license by employing express license restrictions as a condition on the sale of the patented item. Whether these agreements can be enforced has recently been the subject of litigation. Major seed producers typically include express license restrictions on seed bags (called "bag tag" or "seed-wrap" licenses), when purchasing seed. In a recent decision, the Court of Appeals for the Federal Circuit upheld Monsanto's Roundup Ready technology agreement against a challenge mounted by a Mississippi farmer, Homan McFarling. The McFarling case and others like it are likely to spur state legislatures into passing legislation that will seek to regulate contracting practices in seed producer-grower transactions. Within the past year, seed-contract legislation has been proposed in numerous states in the Farm Belt. Some legislative proposals purport to outlaw contract provisions that prohibit seed saving. Some prohibit contract provisions that specify where the grower will be subject to suit for patent infringement. Proposals of this type may well prove controversial. Although states have authority to regulate contracts (including IP contracts) affecting their citizens, states lack authority to enact regulations that conflict with federal IP regime. Courts may well be called upon to draw the line in future cases involving seed-wrap license agreements that arguably conflict with state regulations. Turning away from patent law doctrine towards broader policy concerns, one major policy question after J.E.M. is whether there remains a meaningful long-term role for plant variety protection under the PVPA. PVPA protection is cheaper to obtain than is utility patent protection, and may facilitate branding. In addition, PVPA protection may be superior to trade secret protection in that trade secret protection does not preclude reverse engineering. However, we expect that utility patent protection will quickly emerge as the dominant form of IP protection for the domestic seed industry. Whether this arrangement is optimal will be an important future question for IP policymakers.