Organisms and manufactures: on the history of plant inventions

Abstract

This article examines the nature of the invention in intellectual property law. Taking the United States' Plant Patent Act of 1930 as its central focus, it explores the terms in which the compatibility of biological inventions with the modern paradigm of the invention was debated in the first part of the 20th century. The questions addressed in the debates leading up to the enactment of the Plant Patent Act of 1930 - what kinds of plant qualified as patentable subject matter; what exactly did a breeder have to do in order to qualify as an inventor; and what was the relationship between the act of invention and the act of reproducing the invention - were ultimately questions about the consistency of ideas and the nature of manufacture, the answers to which are as pertinent today as they were some 80 years ago. We argue that in answering these questions, the traditional notion of the invention was redefined. Whereas traditional utility patents were based on the assumption that the only actor able to exercise agency in relation to the development of a novel invention was the human inventor, the regime of plant patents acknowledged that nature played a key role in the creation of new plant varieties. By altering the concept of agency that underpins the inventive process within patent law, plant patent law fundamentally changed the way that the invention was configured. In particular, whereas mechanical inventors were inventors at the beginning, breeders were inventors after the fact. At the same time, plant patent law also reversed the roles normally played by the participants involved in the creation of the invention. Under traditional patent doctrine, nature provided the material which was then shaped into an invention by the human inventor. In the case of plant patents, nature did the inventing, and the breeder was relegated to the task of identifying and then reproducing nature's creations. One of the consequences of this is that breeders did not create a new genetic principle - instead, they inductively appropriated a natural event. This changed the premise of invention - invention became an inductive rather than an originating act. Using the doctrinal requirement of enablement as a case study, we show how the reconfiguration of the invention had and continues to have important ramifications for the way that plant inventions, as with biological inventions more generally, are dealt with by intellectual property law.