tisiwoota

Having already looked at the question of why people can’t patent themselves, it’s time to branch out across the evolutionary tree and ask: “what’s the big deal with patenting genetically-modified plants?”

One reason this has been a contentious issue is the trickiness of figuring out what, exactly, has been patented.

Is it:
a) just the inserted transgene, or
b) the whole plant?

This question was one of the topics I explored in a final paper for a senior-year elective in property law. In the course of my research, I came across a review (authored by Nathan Busch) which compared the insertion of a transgene in a plant to the “mere” addition of a lever to a watch, based on the finding below from an old court case:

“The inventor of the patent lever, without doubt, added a very useful improvement to it; but his right to a patent could not be more extensive than his invention. The patent could not cover the whole machine as improved, but barely the actual improvement.”

On this basis alone, it seems that a modification to a plant is patentable, but a modified plant, in its entirety, would not be, because the plant itself was not designed by the inventor. And this observation brings us to a much deeper distinction– plants are not man-made machines, but natural organisms.

In Busch’s words: “The cellular machinery required to reproduce the inserted transgene and to effect its function was not “created by man” and was not fully characterized by the inventor.” Our knowledge of plants, or even just plant genomes, is not sufficiently advanced for an inventor to write up a full specification that would even begin to cover everything that a plant is and does.*

The fact that plants can reproduce themselves provides a further interesting twist. Indeed, it’s important to remember that self-reproduction is not just an ability but a– no, the– defining feature of living organisms. So far, humans have not managed to produce a mechanical equivalent, able to both reproduce itself and carry all the information necessary to generate a useful product. Busch points out:

“The plant genome not only contains the instructions necessary to reproduce itself, but it is also capable of creating, with the aid of cellular machinery, a variation of itself having very different characteristics. The closest patentable thing that man can create is a computer program capable of replicating itself onto other computers, and those copies will replicate to still other computers. While the program itself may be patentable, it is doubtful that any court will uphold a claim of infringement if one of the target computers started replicating that program onto itself or onto other computers with or without the knowledge of the target computer owner.”**

Okay. So now we’ve established reasons why the plant itself (plant plus transgene) is not patentable. But what difference does it make?

The basic principle of patent rights is that the patenting grants the inventor a “legal estate” which entails powers to exclude others from making, using, selling, or offering to sell the patented invention. Aren’t the plant and the invention inside so closely intertwined that each of these actions necessarily involves both? Is it possible to make/use/sell a transgenic plant without necessarily making/using/selling the transgene inside?

As you’ll see in Part II, this small question had big consequences for a canola farmer in the Saskatchewan province of Canada.

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* A mechanical analogy is given as follows: “An inventor invents a widget which is made in a manufacturing plant (which has been in existence for longer than the inventor); the processes involved in the manufacturing of the widget are either poorly understood or completely unknown to the inventor. Would a patent issue for the manufacturing plant as well as for the widget? For the widget, probably yes; for the manufacturing plant, probably not. Rejection of an attempt to patent the plant would fail for a number of reasons, not the least of which, except the plant genome, being lack of enablement by the inventor. Therefore, to claim property interest in the biological processes involved in replication of the transgene should not stand.”

** Actually, we have since made strides beyond self-replicating computer programs. Researchers at Cornell have made self-replicating robotic structures. Unlike plants, however, this kind of mechanical reproduction cannot generate variability, but only exact replicas. The researchers say the associated mathematical theory could refine our understanding of “what counts as self-replication.” Self-replication, they say, is not a binary property that a system either possesses or doesn’t, but a graded-continuum, with varying degrees of dependance on environmental conditions [Crystals require very particular conditions to replicate, while rabbit are far less constrained– but even they are “abysmal replicators in deep space”].

And despite the alarmist outlandishness of the “grey goo” scenario of nano self-assemblers overrunning the earth, on a much smaller-scale it’s not impossible to imagine man-made self-replicating technology spreading a few copies here or there in places we hadn’t intended, similar to the way that GM seeds have been shown to drift into nearby fields. I wonder– could nanotherapy lead to some interesting patent infringement situations? This is admittedly ignorant conjecture, but suppose someone receiving a patented nanotherapy wanted to donate blood or an organ to another patient– would that count as unlicensed “use” of the technology, because it would be inadvertantly passed along as well?

Or, at a lower threshold of volition, suppose an invention could be transmitted by saliva– such that you couldn’t help but cure everyone you kiss? How far would the patent holder’s rights extend in that situation? There is a precedent in Canadian law, cited in Busch’s review, for allowing consumers to purchase products under terms that allow freedom of use of a patented invention “in the ordinary pursuits of life”. But that option is typically restricted to use only, and does not grant freedom to make or distribute copies of an invention. So it’s an interesting speculation how the legal system would handle such a challenge…

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Citation:
Nathan A. Busch, Jack and the Beanstalk: Property Rights in Genetically Modified Plants 3 MINN. INTELL. PROP. REV. 1 (2002) [pdf]