If nature has made any one thing less susceptible than all others of exclusive property, it is the
action of the thinking power called an idea, which an individual may exclusively possess as
long as he keeps it to himself.... Inventions then cannot, in nature, be a subject of property.
(However) society may give an exclusive right to the profits arising from them, as an encour-
agement to men to pursue ideas which may produce utility (Jefferson, 1987).Jefferson’s concept of society providing legal mechanisms for inventors to have exclu-
sive rights to profits from their ideas was subsequently integrated into the United States
Constitution, Article I, Section 8, which states that “The Congress shall have power...
to promote the progress of science and useful arts by securing for limited times to
authors and inventors the exclusive right to their respective writing and discoveries.”
This forms the basis for IP rights and has become the cornerstone of the innovation
process in the United States and more recently in many other countries throughout
the world.
There are several forms of intellectual property, including plant and utility patents, copy-
right, trademarks, and trade secrets. In agricultural biotechnology, the dominant forms of
intellectual property arepatents, and these are the primary focus of this chapter. Patents
provide just what the constitution promised—the right to exclude others from using your
invention. Importantly, this right is conferred by a national government for a specified
time period, usually 20 years. The patent is enforceable only in those countries in which
it was specifically awarded and after the 20-year term of the patent expires, the invention
can then be used by anyone without restrictions. So, in general, a patent provides an intel-
lectual property right that is geographically limited to the specific countries in which patent
protection is obtained and it is time-limited by the term of the patent. This is a significant
way in which patent-protected intellectual property differs from tangible or real property,
where ownership is rarely limited by either geography or time. These differences
between intellectual property and tangible property often have an impact in biological
research since research materials (vectors, genes, cell lines, etc.) are usually obtained
under the terms of amaterial transfer agreement(MTA), which likely contains provisions
on how the material is used. Because the MTA governs the transfer of tangible or real prop-
erty, the terms of the agreement typically do not contain geographic or temporal limitations
and, as a result, the restrictions imposed by MTAs can become particularly problematic.
The monopoly that a patent provides to aninventoris a very powerful economic right,
and, as a consequence, the invention must meet a standard ofnovelty,non-obviousness, and
utility—that is, the invention must be original and not previously known, it must not be an
obvious extension of previously known information, and it must have some useful purpose.
The standard of novelty has an important implication for researchers since the primary
means of scientific communication is through broad publication, which, if done carelessly,
can destroy the patentability of an invention. The section of US patent law relevant to
novelty states that a patent application can be rejected on lack of novelty grounds if “the
invention was...patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent, or.... More than one
year prior to the date of the application for patent in the United States.” In most other
countries, the one-year grace period provided in the United States does not exist and
public disclosure of an invention immediately bars patentability in those countries. In
addition to the timing of public disclosures, a researcher also needs to consider the
meaning of the wordsprintedandpublication. For example, is a document or a slide pres-
entation posted on the Internet consideredprinted, such that the document bars future
328 INTELLECTUAL PROPERTY IN AGRICULTURAL BIOTECHNOLOGY