Originalism, J.E.M., and the Food Supply, or Will the Real Decision Maker Please Stand Up?

Abstract

In 2001, the United States Supreme Court decided that sexually reproduced plants (which include major crop plants such as corn) are statutorily proper subject matter for utility patents. See J.E.M. Ag Supply, v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124 (2001). Since that decision, critics from many disciplines have argued that the world's food supply is at risk from giant agribusinesses' manipulation of utility patents on genetically modified plants and animals. In light of these fears, this paper revisits J.E.M. and then highlights a related, still-open legal problem with biotechnology patents. Looking backwards to J.E.M., the paper reaches several negative conclusions. First, patentable subject matter was expanded by interactions of the federal court system and the Patent and Trademark Office. Contrary to basic republican theory, no publicly accountable official ever decided that full utility patent coverage of basic food crops was good policy. Despite the Supreme Court's contrary rhetoric, Congress never expressed any "intent" to allow patent holders to halt independent research on basic food crops. Second, the J.E.M. decision rested in part on the Court's missing the statutory cross reference between 35 U.S.C. Section 119(f) and 35 U.S.C. Section 161 Paragraph 2. Third, the J.E.M. decision rested on incomplete information about the PTO and Federal Circuit's handling of the written description requirement of 35 U.S.C. Section 112 Paragraph 1. The Court believed that science had advanced to the point where genetic plant modifications could meet the strict enabling written description requirement Section 112 Paragraph 1. On the contrary, without congressional permission, the PTO had allowed the substitution of deposits for written descriptions.

Looking forward, the Section 112 Paragraph 1 problem with biotechnology utility patents (including, but not limited to, patents on plants) is still open for court challenge, but only to the Supreme Court. The Federal Circuit officially blessed the PTO's statutory bypass in, for example, Enzo Biochem, Inc. v. Chugai Parma U.S.A., Inc., 323 F.3d 956 (Fed. Cir. 2002), vacating 285 F.3d 1013 (Fed. Cir. 2002) (holding patent invalid for failure to fulfill written description requirement). Besides the separation of powers problem with PTO/Federal Circuit erasure of statutory requirements, deposit does not serve the public as well as written description.

This paper is part of the Malthus, Mendel, and Monsanto Conference held at the University of Oregon School of Law in April 2004. The symposium will be published in 2005 by Oregon's Journal for Environmental Law and Litigation.

Keywords: biotechnology, utility patents