Plant Patents

Gerard Magliocca

Gerard N. Magliocca is the Samuel R. Rosen Professor at the Indiana University Robert H. McKinney School of Law. Professor Magliocca is the author of three books and over twenty articles on constitutional law and intellectual property. He received his undergraduate degree from Stanford, his law degree from Yale, and joined the faculty after two years as an attorney at Covington and Burling and one year as a law clerk for Judge Guido Calabresi on the United States Court of Appeals for the Second Circuit. Professor Magliocca has received the Best New Professor Award and the Black Cane (Most Outstanding Professor) from the student body, and in 2008 held the Fulbright-Dow Distinguished Research Chair of the Roosevelt Study Center in Middelburg, The Netherlands. He was elected to the American Law Institute (ALI) in 2013.

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3 Responses

  1. I don’t know if this qualifies as a “good explantion” or a “valid reason,” but…

    * Historically, the Patent Office refused to grant utility patent protection to *any* living organism, deeming all such to be products of nature. That rule has been softened in recent decades (see, e.g., Diamond v. Chakrabarty, 447 U.S. 303 [1980]), but those changes came well after the Plant Patent Act of 1930.
    * It has been argued that a new distinct variety of plant is not susceptible to being described in the same way as other inventions so as to satisfy the written description requirement of 35 USC section 112. So under the Plant Patent Act, the written description of the plant need only be “as complete as is reasonably possible” or some such.
    * Plant patents allow for a quicker, cheaper, less complicated process of patent prosecution in exchange for less patent protection, e.g., the doctrine of equivalents does not apply with plant patents, and the sexual reproduction of claimed plant material is not infringing activity (since plant patents cover only asexual reproduction).
    * FWIW, new plants can be protected by regular utility patents, see J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, 534 U.s. 124 (2001), provided they meet all the normal requirements of utility patents (usefulness, written description, enablement, etc.).

    The persistence of plant patents may be historical inertia, a relic of pre-Chakrabarty rules and precedent. As a theoretical matter, they may not make much sense, except as a form of reduced-protection-on-a-reduced-showing.

  2. Shag from Brookline says:

    What we need is to establish “Plant Parenthood” chapters throughout the 50 states to educate farmers and consumers to assure that plant patent royalties will not consume the increasing income inequality gap.

  3. Gerard Magliocca says:

    Thanks Paul. That’s quite helpful.