Weed-Free I.P.: The Supreme Court, Intellectual Property Interfaces, and the Problem of Plants

Abstract

Intellectual property law offers little solace for the fastidious. Intellectual property regimes germinate and proliferate in a generally untidy manner. Intellectual property regimes have fuzzy edges, and many regimes overlap with others - trademarks with copyrights, patents with trade secrets, copyrights with design patents - in unpredictable, unusual, and even alarming ways, resulting in complex intellectual property interfaces.

In the past, the Supreme Court exhibited a measure of tolerance for messy interfaces among intellectual property regimes. Now, the Court's attitude may be shifting. Last term, the Justices showed signs of squeamishness over the prospect of concurrent patent and trade dress protection. This term, the Court has agreed to hear J.E.M. Ag Supply v. Pioneer, another, more complex case involving concurrent protection.

In J.E.M., the problem is plants. The precise interface issue is whether plant innovation should be exclusively consigned to protection under the specialized "plant variety protection" regime, or whether it may also concurrently be protected under the general utility patent regime. In addition to its substantial practical significance, the case also raises many important theoretical questions: to what extent should the law tolerate messy interfaces between intellectual property regimes? Should innovators be entitled to accumulate protections, or should they be forced to elect from among regimes? Do differences among intellectual property regimes invariably signal conflict (and inefficiencies), or might they also signal synergies?

In this essay, we analyze the intellectual property interface problem through the lens of the J.E.M. Ag Supply v. Pioneer case. We introduce the regimes at issue and explain the interface arguments, and analyze potential judicial and legislative approaches to reconfiguring the interface.

We suggest that when deciding J.E.M., the Court should focus on the following considerations: (1) regarding the specific interface issue in the case - the utility patent/plant variety interface - the Court has already dealt adequately with the principal textual arguments in Chakrabarty, and recent scholarship only reinforces the correctness of the Chakrabarty plurality opinion. (2) reconfiguring an interface between patent and non-patent regimes by imposing judicially-crafted exceptions to patent eligibility is counterproductive; it stimulates opportunistic patent claims drafting and ancillary litigation, and may result in the diversion of innovation to less socially-desirable protection schemes. (3) reconfiguring an interface between patent and non-patent regimes should be left to the legislature when existing, entrenched doctrine supplies no compelling solution, and where the interface problem implicates complex policy judgments best rendered on a developed empirical record.

Congress has not created intellectual property regimes so as to fit together seamlessly. Sometimes the interfaces are messy and create the potential for concurrent protection pursuant to overlapping regimes. Whether this configuration of intellectual property regimes advances technological progress or thwarts it is a complex policy judgment. In the case of plant innovation, it is a judgment best suited for Congressional deliberation. The alternative - judicial reconfiguration of the utility patent/PVPA interface through the use of patent eligibility restrictions - is likely to impose costs without achieving concomitant benefits.