ngin - Norfolk Genetic Information Network

3 October 2001

New US Supreme Court case gives agbiotech the jitters
by Philippa Maister, BioMedNet News

On Wednesday, October 3, the US Supreme Court will hear a patent case that could shake the nation's biotech industry to its roots. The case revolves around a David-like figure who is challenging one of the Goliaths of the genetically engineered seed industry. The outcome could make biotech patents in general much easier to challenge.

Technically, the Supreme Court is being asked to decide whether sexually reproduced plants are patentable subject matter under US law. If Goliath loses, the decision could overturn the precedent-setting 1980 case, Diamond v. Chakrabarty, on which companies have relied in seeking patents for biotech products.

Major agricultural companies like Monsanto, Cargill, and BASF have lined up to submit amicus curiae briefs in support of the defending company, Pioneer Hi-Bred International Inc. So have the Biotechnology Industry Organization and the American Intellectual Property Association.On the side of the plaintiff, J.E.M. Ag Supply Inc., are corn growers and a group of 10 law professors.

The case began when Pioneer sued J.E.M., a small Iowa farm supply company, for reselling - without Pioneer's authorization - 1,300 bags of Pioneer's hybrid corn seed. The corn involved was not genetically modified, according to spokesman Doyle Karr. However, Pioneer holds a patent on the germplasm that makes this corn genetically different from other corn varieties or hybrids. Only the company's authorized representatives have the right to sell the hybrid seed.

Notified of the violation, J.E.M.'s owner, Marvin Redenius, reacted in a manner that, according to Karr, Pioneer did not expect. He took the company to court, arguing that Congress never intended to make plants subject to the patent system. Instead, Redenius contended, seeds and seed-grown plants are protected by a later statute, the Plant Variety Protection Act.

Two lower courts have unanimously held in Pioneer's favor. Nevertheless, using his own resources, Redenius has taken his case to the Supreme Court. His lawyer, Bruce Edward Johnson of Des Moines, Iowa, says Redenius' response was driven partly by anger at the fact that Pioneer initiated the lawsuit "out of the clear blue sky" without as much as a phone call. "He also opposes the use of patents on plants to lock up their gene pools and restrict research and seed-saving as part of a move to consolidate the agricultural industry," Johnson said.

Michael Ward of Morrison & Foerster, LLP, a San Francisco patent law firm, says what sends tremors through the biotech industry is the fact that the Supreme Court unexpectedly chose to hear the case. Normally the Court does not hear cases when it agrees with lower courts' rulings. "The main reason the court hears a case is because it wants to change the law or reconsider it." Ward said.

While agricultural interests would be most directly affected by a ruling against Pioneer, Ward says such a ruling would have broad ramifications for the biotech industry in general. "We have case law in Chakrabarty that says 'anything under the sun that is made by man' can be patented. If you take away from that broad definition, the question is where does it end, where do you draw the line?" he said. "It would all depend on the language the Court uses. That's why the biotech and ag industries would like a strong decision that Chakrabarty is the law."

The Supreme Court could also choose to look at constitutional issues, according to Malla Pollack, a patent lawyer and visiting scholar at Northern Illinois University. "According to the US Constitution, Congress only has a limited right to create intellectual property rights: to promote the progress of science and the useful arts." Congress at the moment is "simply letting the big interests write patent law anyway they want to," she asserted.

Pollack feels the case could allow the court to tell politicians to back down. "I would like the Supreme Court to say Congress cannot pass any intellectual property statute it likes," she said. "Congress must think it through and make a factual record stating that this particular patent right promotes the useful arts."

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