Designing an Optimal Intellectual Property System for Plants: A U.S. Supreme Court Debate

5 Pages Posted: 20 Nov 2001

See all articles by Jay P. Kesan

Jay P. Kesan

University of Illinois College of Law

Mark D. Janis

Indiana University Maurer School of Law


Historically, intellectual property systems have facilitated the commercialization of plant innovation by offering specialized protection regimes for specialized circumstances. In 1930, the U.S. Congress created a "plant patent" regime designed specifically to provide rights against unauthorized asexual propagation, a serious problem in the nursery industry. In 1970, Congress created a "plant variety protection" (PVP) regime that is tailored to provide limited rights against duplication of protected varieties via seeds, a matter of obvious importance in the commercialization of crop plants. At the time, no one perceived any conflict between the specialized regimes and the general "utility" patent system. However, today, the emergence of plant biotechnology, and continued advances in plant breeding techniques, have prompted new questions about the reach of the utility patent regime and its compatibility with plant-specific regimes. In October 2001, the U.S. Supreme Court heard arguments in J.E.M. Ag Supply v. Pioneer Hi-Bred, in which the Court considered whether plant innovation can be protected -- like all other innovation -- under the general "utility" patent system, or whether plant innovation is to be consigned exclusively to specialized regimes. The Court's decision is likely to have major ramifications for the future application of intellectual property regimes to plant research.

The decision is likely to have significant practical implications as well. Since 1985, the U.S. Patent and Trademark Office (PTO) has granted hundreds of utility patents on all aspects of innovation relating to plant science: on plants themselves, seeds, breeding methods, plant biotechnology. The Court's J.E.M. decision could impact the validity of many of these existing utility patents on plants.

In this article, we explain the issues that the Court will be asked to consider, assess the Court's options in resolving the case, and propose a resolution that best balances private rights and public access to the results of plant research. Our proposal calls for the Court to preserve the current state of the law, in which plants fall among the categories of subject matter that are eligible for utility patent protection. The Court should decline the invitation to rework the nation's intellectual property policy as applied to plants, leaving the job of comprehensive policy reformulation - if it is needed at all - to Congress.

Suggested Citation

Kesan, Jay P. and Janis, Mark David, Designing an Optimal Intellectual Property System for Plants: A U.S. Supreme Court Debate. Available at SSRN: or

Jay P. Kesan

University of Illinois College of Law ( email )

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Mark David Janis (Contact Author)

Indiana University Maurer School of Law ( email )

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Bloomington, IN 47405
United States