DIVISION OF THE HUMANITIES AND SOCIAL SCIENCES CALIFORNIA INSTITUTE OF TECHNOLOGY PASADENA, CALIFORNIA 91125 PLANTS AS INTELLECTUAL PROPERTY: AMERICAN PRACTICE, LAW, AND POLICY IN WORLD CONTEXT Glenn E. Bugos University of California, Berkeley Daniel J. Kevles California Institute of Technology HUMANITIES WORKING PAPER 144 May 1991 Revised October 1991 PLANTS AS INTELLECTUAL PROPERTY* Since the late nineteenth century, private plant breeders in the United States, like those elsewhere, have long been concerned with what they term "breeder's rights" or what lawyers call the protection of intellectual property. Such property arises, in general, from the investment of time, money, and ingenuity that produces a new type of plant variety or -- a much disputed category -- exploits the finding of one. (A plant variety generally means an assemblage of cultivated individuals that is distinguished from its counterparts in some set of characters - physical, morphological, or otherwise -- and that retains its distinguishing features when reproduced.) Having created such property, private breeders have held that they have a right in it. They have also sought to obtain protection of their property right in various ways, including private arrangements and, with increasing vigor, public policy and law, especially in the patent system. Horticulturalists first attempted to obtain patent protection for their products in 1906. They did not succeed until the passage of the Plant Patent Act in 1930, which was a limited victory for plant breeders, since it applied only to horticultural products.1 The 1935 Bankhead Janes Act, which included major provisions for agricultural research, and the 1952 revision of U.S. patent law, a sweeping overhaul, were both silent on issues of intellectual property protection for plants in general. However, in 1970 Congress provided protection for a broad range of plants by enacting the Plant Variety Protection Act (PVPA).2 Since then, the range and type of intellectual property protection for living organisms has been enlarged in a whirlwind rush -- with a 1980 act to extend the coverage of the PVPA; the 1980 Supreme Court decision of Diamond v. Chakrabarty, which gave patent protection to living microrganisms; and the extensions of that decision by the United States Patent and Trademark Office in 1985 and 1987, through, respectively, Ex parte Hibberd, which ruled that any type of plant could in principle be patented, and Ex parte Allen, which held that so could living animals.3 The tale raises important historiographic questions: Why was the victory of the Plant Patent Act not enlarged until 1970? Why was it broadened then? And why has it been so much expanded since then? An exploration of these questions reveals a good deal about the historical interplay among breeding science, economic interests and circumstances, private arrangements, and public * We wish to thank the Alfred P. Sloan Foundation, the Andrew W. Mellon Foundation, and the Division of Humanities and Social Sciences of the California Institute of Technology for support during the work on this study. We also wish to thank Rebecca Ullrich for assistance in research. law that has shaped intellectual property protection in plants. We here examine that interplay - first, as background to the shift in 1970; second, to account for the shift; and third, to suggest reasons for the speedy extension of intellectual property protection to living organisms in general during the last quarter of a century. * * * Through much of the nineteenth century, plant innovation in the United States depended heavily upon plant importation. In 1839, the U.S. Patent Office began importing plant varieties from around the globe, a practice formalized, in 1862, in the act that established the Department of Agriculture (USDA), which, among other things, enjoined the agency "to procure, propagate, and distribute among the people new and valuable seeds and plants." The Department accomplished the distribution by sending out packets of seeds -- in 1897, a record-high of more than twenty-two million of them -- free to American farmers. However, in the late nineteenth century, partly in response to the glut in the world wheat markets, the Department of Agriculture began to develop a commitment to the innovation of new grains of high quality that might find strong export market demand.4 By the early twentieth century the Hatch Act of 1887, which established federal support for agricultural experiment stations, and the Adams Act of 1906, which provided federal grants for agricultural research, were providing increasingly handsome federal subsidies for research in plants. These measures reflected Congressional acceptance of the idea that American agriculture was shifting from an extensive growth pattern arising from the addition of land, water and labor to an intensive growth pattern, the result of more scientific application of those resources. Since the biological needs of its crops determined how each farm arrayed its resources, public agricultural stations soon began systematic breeding to improve the seeds that initiated the process. The large majority of plant development occurred in the greenhouses and test plots of the USDA and of the many agricultural experiment stations attached to state colleges and universities. In a recent study, Jack R. Kloppenburg, Jr., concluded that through the first third of the twentieth century, the history of plant improvement "is essentially that of the continuous growth and elaboration of publicly performed research and development in a virtual vacuum of private investment." In 1934, one hundred twenty-eight principal varieties of wheat were grown 5 in the United States; seventy-eight per cent were of public origin. However, the free availability of publicly developed plants and seeds helped to foster the development of private plant breeding activities. Land-grant universities provided scientifically trained breeders and progressive farmers receptive to well-bred seed. The USDA also promulgated standards of practice and definition in seed testing that rationalized assessments of 2 seed quality. Most important, the new varieties provided by public stations were appropriated by private breeders, who tested them against local conditions and multiplied them for sale to their neighbors. As a result, by the late nineteenth century, a private seed industry was emerging in the United States -- the American Seed Trade Association had been founded in 1883 -- as was a flourishing private horticultural industry, members of which had formed the American Assocation of Nurserymen, in 1875. Both seedmen and horticulturalists were acutely aware that the facts of biology made their intellectual property vulnerable to piracy and fraud. With sexually reproducing food plants, farmers could harvest the seed from one year's crop and plant it the next (in 1915, for example, farmers themselves produced 97% of the seed they sowed for wheat).6 New varieties of many fruit trees, shrubs, vines, or flowering plants could be reproduced asexually -- that is, like roses, from cuttings or grafts. Thus, developers of such plants had no natural control over the reproduction of their property once it was sold. In a few years a new plant or tree could be anybody's plant or tree. Fraud arose from the facts of human nature: unscrupulous dealers might sell plants or seeds under false labels. The facts of biology helped make such fraud possible because it was difficult to determine whether a plant or seed was truly what it was represented to be or was a degenerate form taken from the progeny of an original variety. In 1896 Fruit Grower Magazine railed against "Injustice to New Fruits," and said many plant breeders were leaving their "patient toil" for lack of encouragement.? Plant breeders sought to protect their interests through a variety of private arrangements. The simplest, which assumed that the breeder would obtain no market control over succeeding generations of his plant, amounted to selling the first new varietals at a high price (according to one report, a "good-sized fortune" might be paid for half a dozen new strawberry plants). Luther Burbank once declared that, although he would prefer the widespread testing of all his new fruits and flowers, such a practice would "be a perilous risk or utter ruin to the originator, as a single bud or seed in the wrong hands may place an unscrupulous person on an equal footing with the originator" in the market. He added, reflecting on the plight of the private breeder, "Having no Government aid or even protection, or college endowment to back us and to pay our bills, we must receive early returns, in part at least, for our tremendous expenses.''8 The more complicated arrangements imposed contractual obligations upon the purchaser -- for example, an agreement that he would neither sell nor give away grafts or cuttings, and the posting of a bond that provided surety of compensation if he did. Stark Brothers compelled such an agreement and bond from every farmer who bought a Delicious apple seedling.9 The passage of the federal Trademark Law in 1881 provided plant and seed developers a means to protect their intellectual property against fraud. A trademark could be any adjective or symbol -- for example, "Star" or "Majestic Beauty" -- or a company name such as Burpee. 3 Obtaining a trademark required merely registration of a word or stylized drawing, though the trademark had to be actively used to be legally maintained. The company name was the most valuable type of trademark, since it signified the firm offering the product, including its reputation for quality, rather than the size, color or type of the product itself, and could be employed only by the company registering it. Perhaps the most important inspiration to breeders in the appropriation of trademarks for plant protection was the Stark Brothers Nursery, in Louisiana, Missouri. In 1892, first prize at the Stark Fruit Fair -- an annual competion that the firm held to obtain new varieties -- went to an apple with a glossy red color that, so the story goes, proprietor Clarence Stark bit into and exclaimed, "Delicious! That will be its name." Stark tracked down the source of the apple, bought sole rights to the tree, which he surrounded with a tall metal fence, and trademarked the fruit as the "Stark Delicious" apple.10 Yet trademarking protected only the name: It did little to defend the breeder against the fact that the same rose by any other name might be marketed to smell as sweet. In short, trademarking did not protect a breeder's rights in a particular plant or fruit as such. For that reason, the development of the plant and seed industries was accompanied by a demand for protection of the breeder's intellectual property, particularly through the patent system. The American patent system rests on Article I, Section 8 of the United States Constitution, which empowers the Congress "to promote the Progress of Science and useful arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries." Congress had been quick to use its power, laying the foundation of American patent law in a statute that it enacted in 1790 and amended in 1793. Inventors were given exclusive rights in their inventions for fourteen years, a period drawn from British practice, which was based on the estimated time required to train two sets of apprentices, one after the other, in a new technique. (The American period was extended to seventeen years, in 1861, a compromise between the original fourteen and the twenty-one years that, after 1836, was allowed in exceptional cases.) But in granting the monopoly right, society struck a bargain with the inventor, compelling her to forgo secrecy. Indeed, the term "patent" derived from the phrase "letters patent" -- "open letters" -- meaning that in return for the protection of an exclusive right, the inventor had to disclose the details of his invention publicly so that other inventors, knowing its workings could try to improve upon it.11 The 1793 amendment defined, in language written by Thomas Jefferson, what was patentable: "any new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement thereof." At the turn of the century, Jefferson's phrasing remained at the core of the U.S. patent code (as it does today, except for the eighteenth-century word "art," which was replaced in the 1952 Congressional overhaul of patent law by the word "process").12 However plant patenting was legally discouraged in 1889, when the U.S. Commissioner of Patents upheld an examiner's rejection of an application for a patent to cover a fiber identified in 4 the needles of a pine tree. The examiner had argued that the fiber was unpatentable because it was undistinguishable from any other fiber. The commissioner transformed the reasoning into a landmark doctrine, noting that ascertaining the composition of the trees in the forest was "not a patentable invention, recognized by statute, any more than to find a new gem or jewel in the earth would entitle the discoverer to patent all gems which should be subsequently found." The Commissioner added that it would be "unreasonable and impossible" to allow patents upon the trees of the forest and the plants of the earth. As a result, it became a fundamental tenet of patent law that, in general, no protection could be obtained for products of nature, either inanimate or living. While the processes devised to extract what was found in nature could be patented, objects discovered there could not. They were not inventions, nor could they as a class be made anyone's exclusive property.13 In 1891, in a report to the American Association of Nurserymen, the respected plant scientist Liberty Hyde Bailey, of Cornell University, added technical weight to the legal discouragement. Two years earlier Bailey had told the nurserymen that an obstacle to any type of intellectual property protection for plants was that new types of plants were difficult to define or specify. Now he pointed out that most new varieties were accidents that the nurseryman found rather than the product of systematic breeding, adding, however, that "when the time comes that men breed plants upon definite laws and produce new and valuable kinds, then plant patents may possibly become practicable."14 The rediscovery of Mendel's laws at the turn of the century encouraged breeders to think that the era of controlled plant innovation had come to pass. Indeed, the power of Mendel's laws was invoked by one Hyland C. Kirk, a horticultural spokesman, when he appeared as the principal witness before the House Committee on Patents when it held hearings to consider the 1906 bill to establish intellectual property protection for plants. The measure, originally aimed at strengthening plant trademarks against infringement, had been revised to allow patents for horticultural plants, trees, and vines. Advancing a claim that would be repeated frequently in the debates over plant patenting, Kirk declared that the originator of a "new variety of plant, tree, or vine ... is as truly an inventor and, as such, as justly entitled to protection as the originator of a new motor, a new chemical compound, or any other valuable combination of materials requiring experiment, deliberation, and design."15 Nevertheless, the bill died in committee. Evidently, few Americans considered breeding distinct enough from the practice of farming to warrant special protection. Farmers and horticulturalists might find innovation in the field in the form of plant sports or mutations that might be exploited. (Stark Brothers also continued to find bonanzas in the mail, notably the yellow apple that arrived at the nursery in a box one day in the spring of 1914 and that they soon marketed as the Stark Golden Delicious.) Both breeders and farmers continued to benefit from the 5 importation of new plant varieties from abroad and from the expanding activities of public breeders in the agriculture department and state universities, colleges, and experiment stations. Then, too, by practice and tradition, farmers assumed that they should enjoy free and unencumbered access to new seed varieties. And urban Americans probably tended, like Europeans, to think of food as a scarce resource and to be reluctant to grant anyone a monopoly right over food products, even for a limited period.16 Although an immediate failure, the 1906 venture did lead to the formation of a lobbying group, the National Committee on Plant Patents, which was organized and kept alive by Archibald Augustine of Augustine Nurseries in Bloomington, Illinois. By the late 1920s, nurserymen were especially interested in patents, not least because the potential American market for their stocks was estimated -- according to a report delivered to the 1928 convention of the American Association of Nurserymen -- at one billion dollars, almost entirely on the ornamental side.17 When Augustine was elected president of the American Association of Nurserymen in 1929, he was succeeded in the chairmanship of the National Committee by Paul Stark, who was happy to invigorate the movement for plant patenting. Stark was a principal in the Stark Brothers Nursery, which was now a century-old and, capitalized at one million dollars, was the largest breeder in the country. Stark brothers continued to derive some of its stock by running competitions for prize fruit specimens, but it also relied on more consistent sources, notably Luther Burbank.18 Paul Stark had met Burbank in 1893, when Burbank was worried about making enough money to continue his research. A friendship and business arrangement blossomed. Stark Brothers came to own exclusive licenses to many of Burbank's cultivars. When Burbank died, in 1926, his will stipulated that his farm, in Santa Rosa, California, be converted into the Stark-Burbank Research Laboratories and Experimental Grounds. Stark thus inherited hundreds of varieties of plums, peaches, apples, cherries, pears, roses and gladiolas that had never been marketed -- and that might be patented, if patent protection were available. It was Stark, who, at the behest of the president of the American Association of Nurserymen, became the prime mover behind the 1930 Plant Patent Act.19 Stark himself drafted the measure. It was introduced in the Senate by John G. Townsend, Jr., of Delaware, who probably knew Stark and certainly had reason to sympathize with his purpose, since he owned 130,000 acres of apple orchards, which made him the second largest orchardist in the country.20 Endorsements of the bill rained down upon the Congress from horticulturalists, nurserymen, farmers, agricultural experiment stations, and their organized representatives, including the American Farm Bureau Federation, the National Grange, the International Appleship Association, and the Peony and Iris Association. Thomas Edison wired that Congress could do nothing better for American agriculture than "to give the plant breeder the same status as the mechanical and chemical inventors now have through the patent law." Luther Burbank's 6 widow sent a telegram of her own declaring that her late husband would have been "unable to do what he did with plants had it not been for royalties from his writings and from other by-product lines of activity" and declared that most other plant developers were unlikely to derive such ancillary revenues from their work. 21 In brief hearings, perfunctory floor debate, and the reports on the bill, its Congressional promoters noted the considerable dependency of plant breeding and research on governmental money, emphasizing that the establishment of a breeder's legal right in his innovations might stimulate private investment in these activities and make it possible for the breeder to reduce his prices. They pointed to the incentives that patent protection would give plant breeders to develop varieties resistant to blight and disease and rich in food or medicinal qualities; varieties that would strengthen public health, prosperity, and national defense -- and all without the expenditure of federal money. With sentimental nods to Luther Burbank, who was said to have made no money from his plants, the bill's enthusiasts promised that it would rescue plant breeders from vulnerability to piracy and the fate of an impoverished death.22 In these first few months of the 1930s Depression, the measure appealed as a farmer's and plant breeder's relief bill, Hoover-Republican style. With Republicans still in control of the Congress, the prevailing wisdom around Washington about how to respond to the worsening economic slide was: encourage private enterprise, reduce government costs and activities. There was only scattered opposition to the bill, including some biting harassment from Congressman Fiorello Laguardia, who was hazy in his understanding of heredity in plants but who understood well that the measure did nothing for direct farm relief. The Plant Patent Act passed easily on a voice vote some three months after it had first been introduced. Edison cheered in The New York Times, "Luther Burbank would have been a rich man if he had been protected by such a patent bill.n23 In a report on the bill, the House Committee on Patents, mindful of the product-of- nature doctrine, had addressed the constitutionality of the measure, asking: Would a new variety of plant be a discovery, and could its originator be considered an inventor or a discoverer? The report's answer: Yes, on both counts. In the reasoning of the document, while a new variety of plant found in the field was a product of nature and, hence, not patentable under the meaning of the word "discoveries" in Article I, Section 8, a new variety arising from cultivation was such a discovery -- and its cultivator a discoverer -- since it was created by human agency. The report saw no difference between "the part played by the plant originator in the development of new plants and the part played by the chemist in the development of new compositions of matter." Both took the materials of nature, exploited its laws, and, applying a variety of techniques, devised a new and useful product.24 7 However, at this stage of history, chemical products and plants differed from each other in ways that affected the type of patent protection that plants could obtain. Patent law insisted that an invention be disclosed specifically enough to be identically reproducible. Chemical products, as dead matter, were highly specifiable as to composition and methods of production and reproduction. Plants, as living matter, were difficult to specify in either regard. These differences were reflected in the Plant Patent Act, which accommodated the basic tenets of patent law to what we may recognize as the problem of biological specificity in intellectual property protection. The act limited patent protection to those plants that could be reproduced asexually. Often termed cloning, asexual reproduction could be accomplished by budding, grafting, rooting of clippings, or division of bulbs; it yielded progeny genetically identical to the parent plant or tree. The act also explicitly excluded from patentability tuber-propagated plants -- a provision that would substantially affect only Irish potatoes, which was a major cash crop, and Jerusalem artichokes, a type of sunflower that was widely used as a vegetable and a livestock feed. Resistance to allowing monopoly control of any type over major food stocks may have figured in the exclusion. However, to advocates of plant patenting, authorizing patents on tuber-propagated plants like the Irish potato threatened the enforceability of plant patents in general, mainly because the part of them that is involved in reproduction is also widely sold as food. Paul Stark later explained the reasoning behind the exclusion: Because potatoes were available everywhere "for use as food or for growing the plants," infringement of a potato-plant patent would be "easy" and "widespread," making enforcement "a farce." He added, "This would reflect unfavorably on enforcement with the other types of asexually reproduced plants -- so for that reason potatoes were excluded from the original Plant Patent Act in 1930."25 Stark and his allies had perceived an equally vexing enforcement problem for patents on sexually reproduced plants. Such plants could not generally be relied upon to breed identically true to type from one generation to the next. (Sexual reproduction joins half the genes from one plant with half from another; over several generations, the progeny can easily drift genetically far from the original parental type. Indeed, the business of plant breeding was fundamentally a battle to limit genetic variability through succeeding generations, since farmers expected the seeds they bought to yield roughly similar plants.) Patents on sexually reproduced plants could not be enforced because the progeny would be different from the patented parent. The likely unenforceability prompted a special committee of the American Society for Horticultural Science to oppose flatly the provision of patent protection for seed-propagated plants, and it convinced key members of the Patent Office and the Department of Agriculture that no bill with such a provision could pass.26 The Congressional stewards of the bill, although they may not have understood the genetics, were evidently sufficiently aware that like did not necessarily breed like 8 to omit from the final measure protection for plants that were reproduced sexually. Despite the restricted coverage provided by the act, it was a boon to breeders like Paul Stark. While narrow, the category of asexually reproducible plants was capacious enough to include much of such breeders' stock in trade -- that is, virtually all fruit and nut trees; most small vinous fruits such as grapes, strawberries, and blueberries; and numerous ornamental shrubs, vines, and perennials, among them lilacs, wisterias, and peonies as well as roses.27 According to The First Plant Patents, a survey published in 1934 by a New York patent lawyer named Robert Starr Allyn, the government had granted eighty-four plant patents by the beginning of that year, including one to Secretary of the Interior Harold L. Ickes, for a red dahlia. Nine of the patents went to Burbank's estate for certain of his fruits and flowers. His widow assigned the patents to Stark Nurseries, which acquired rights to an additional five from other breeders.28 Since the wares of seedmen comprised sexually reproducing plants, the act disappointed the American Seed Trade Association, which had allied itself with Stark in the plant-patent legislative drive. Stark defended the omission of sexually reproduced plants from the coverage of the act, telling the association that "it seemed to be the wise thing to get established the principle that Congress recognized the rights of the plant breeder and originator," predicting that once the principle was in place, it would be "much easier" to get protection for plants propagated by seed. 29 However, while the act installed the principle, the intellectual property protection it provided was no better than the degree of biological specificity -- which was to say the least limited - with which plants could then be identified. The act was extremely permissive in inventive definition, allowing patents on plants, even naturally occurring ones, that might be no more than minimally distinguishable from others, so long as human intervention had been required to reproduce the plant asexually. Its disclosure requirements, adapted to the category of living inventions, were also, of necessity, loose. They called for the submission of a color painting or photograph as well as a written description of the plant that was as "complete as is reasonably possible." They called for an historical preamble describing how the plant was bred or where the sports from which it was asexually reproduced had been found, and how it differed from the plants that comprised its pedigree. They asked for data concerning when the plant bloomed and which soils and climates best suited it. They expected a technical description outlining the color and shape of the bush, leaves, and flower.30 The early applications included a few objective descriptions -- for example, lengths and the tones listed on Ridgway's Color Chart, a commercially manufactured set of cards, much like paint-sample cards, that breeders held against a plant to identify and match a name to its colors. it. Fruit, which was described by external appearance, might be specified by such intrinsic characteristics as acidity and sugar levels.31 The written descriptions advertised the commercial 9