Transcript ABB Power T&D Company, Inc. v. Alstom ESCA Corporation

What Role Does/Should IP Play in the
GM Food Debate?
Elizabeth A. Howard
Orrick, Herrington & Sutcliffe, LLP
1
Patenting Genetically Modified Crops
Common Misconception #1:
• Patents to genes and DNA sequences confer rights
to what already exists in nature.
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Patenting Genetically Modified Crops
What the patent laws actually protect:
• Patents are not granted to genes as they exist in
nature
• Patents may be granted to genes in man-made
compositions e.g. isolated DNA sequences.
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Not Protectable by Patent: Nature,
Physical Phenomena, Abstract Ideas
Products of nature are not protectable by patent, even
“[a] hitherto unknown phenomenon of nature”
- Funk Bros. Co. v. Kalo Co. 499 U.S. 340 (1948)
4
What is Protectable:
“anything under the sun that is made by man.”
- Diamond v. Chakrabarty, 447 U.S. 303 (1980)
5
Purification of a naturally occurring compound
or organism may render it patentable:
• a biologically pure culture of Streptomyces was
held not a “product of nature” and hence patentable
subject matter.
- In re Bergy, 563 F.2d 1031 (1977)
• purified prostoglandins PGE and PGF, naturally
occurring in prostate glands, have been held to be
patentable subject matter.
- In re Bergstrom, 427 F.2d 1394 (CCPA 1970)
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Not patentable:
“a DNA sequence consisting essentially of a DNA
sequence encoding human erythopoietin”
Patentable:
“a purified and isolated DNA sequence encoding
human erythopoeitin.”
- Amgen, Inc. v. Chugai Pharmaceutical Co.,
13 U.S.P.Q. 2d 1737 (D. Mass. 1989).
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Patenting Genetically Modified Crops
Common Misconception #2:
• A patent confers ownership rights
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Patenting Genetically Modified Crops
What the patent right actually confers:
The right to exclude others from making,
using, offering to sell, selling or importing the
patented invention.
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Patenting Genetically Modified Crops
What the patent right does not confer:
The right to exclude others from making,
using, offering to sell, selling or importing
unpatented technologies.
The right to exclude use of the patented
technology in a country in which the patent has
not issued.
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The Extent of IP Protection for Genetically
Modified Crops in the United States
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Extent of Genetically Engineered Crops in
the United States
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% Total US Acreage in Genetically
Engineered Crops in the United States
Transgenic Crop
GE soybeans
GE cotton
GE corn
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% total US acreage
84%
76%
45%
Impact of IP for GE Crops in the U.S.
-Stimulates investment and innovation
-Encourages cross-licensing
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What is the Global IP Story?
-Traditionally widely variable
-GATT Agreement on Trade-Related Aspect
of IP Rights (TRIPs) intended to provide
uniformity:
- Article 27 (patentable subject matter –
inventions must be new, involve inventive
step, capable of industrial application)
- Article 41 et seq. provides for enforcement of
IP rights
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What is the Effect of Weak IP on
Promoting Innovation?
-Local companies reluctant to set up
research facilities
-Leaves funding of local research to public
funding sources
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What is the Effect of Weak IP on
Technology Transfer?
-Companies reluctant to provide know-how
-Particularly problematic in area of GMO,
as easily copied, reproduced
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What is the Consequence of Improved IP
and IP Enforcement?
-Increased prices?
-Effect on quality
-Effect on internally developed technology
-Effect on access to external technology
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IP Protection is Only One Step to
Introduction of GM Crops
-Need to overcome regulatory barriers
-Need willing buyer/seller
-Rules in a single country can have global
effect
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Do GM Crops Benefit Developing
Countries
-Effects on spoilage
-Effects on yield
-Effect on nutrition
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