Abstract

The U.S. Patent Office is functioning effectively, but patent protection for plant biotechnology continues to lag that which is available for other technologies.

Issue

The number of patent approvals in the U.S. has doubled since 1980, leading a number of critics to charge that the U.S. Patent Office has lowered its patenting standards. These lowered standards, the argument continues, have flooded the system with patents of minor importance. While these critics frequently lack detailed knowledge of Patent Office practices, their objections have been widely voiced. Any changes made to the patent system based on these criticisms would be especially harmful to research universities, which generate the majority of patent applications and rely increasingly on revenues from the sale of patented technologies.

At the same time, patent protection for plant biotechnology requires additional consideration, especially as most countries do not recognize patents on plant varieties. Certainly, patenting plant varieties creates breeding access concerns. But the only current alternative, a specialized system known as Plant Variety Protection, is also seriously limited, in that it offers no protection for more significant breeding advances such as resistance to new diseases. A dual-level system developed in 1991 to address this shortcoming has yet to be implemented on a meaningful level, so its effectiveness remains unproven.

Response

We analyzed patent applications under the hypothesis that a substantial decline in standards would be observable as an increase in the proportion, or rate, of patents granted. The analysis predicted that a rising grant rate would engender more applications. If so, the grant rate and the application rate would return to the same equilibrium over time, albeit with an increase in total patents granted. After examining these patterns, we found nothing to support the contention that patent examination standards have declined.

With a colleague, I evaluated the functionality of the "initial variety" system for plant varieties. Under this system, initial varieties are eligible for royalty payments if used in the breeding of a derivative variety. We concluded that the system is inoperable, because it requires that plants exhibit two different forms of improvement simple and complex, or multi-gene. Because one dimension of the system considers the proportion of genetic material that comes from the host plant, setting the proportion low would mean that cosmetic changes could circumvent the system, while setting it high would exclude complex changes. Hence, no single system will serve all needs.

Impact

Our article on Patent Office practices has joined a number of other empirical studies countering the critiques on patent standards. While not claiming that the Patent Office is doing everything well, our study does suggest that it is doing many things well.

Our criticism of the initial variety system is the first article of its type. Others will likely be required before the slow-moving international protection convention takes serious notice.

Funding Sources

• Other USDA (e.g., Water Quality, Special Grants, NRI)

Topic Description

• Intellectual Property Rights

Collaborators

• Rutgers
• USDA/ERS
• Auburn U.

Key Personnel

• Travis Lybbert, Wilkes Honors College, Florida Atlantic University, Jupiter, FL
• Martha Mutschler, Dept. Plant Breeding, Cornell University