THE RELATION OF PATENT LAW AND WILDLIFE CONSERVATION LAW IN THE UNITED STATES A Dissertation Presented to the Faculty of the Graduate School of Cornell University in Partial Fulfillment of the Requirements for the Degree of Doctor of Philosophy by Richard S. Cahoon January 2008 © 2008 Richard S. Cahoon THE RELATION OF PATENT LAW AND WILDLIFE CONSERVATION LAW IN THE UNITED STATES Richard S. Cahoon, Ph.D. Cornell University 2008 The existence of U.S. patents issued on inventions made using wildlife specimens presents legal, economic, policy, and resource management questions. The relation of patent law to wildlife conservation law is central to answering these questions. Patent law is designed to foster technological advancement, and patents are economic instruments intended for market-related activities. Conversely, wildlife conservation law is generally intended to inhibit market forces, to regulate the possession and use of select wildlife populations, and to sustain this public resource. The existence of U.S. patents on inventions from wildlife reveals a practical connection among market value of innovation, property law, and wildlife resources. Answers to fundamental questions of law and policy this connection raises require an understanding of the relation of patent law to wildlife conservation law. This work analyzes this relationship. The premise of the analysis is that the bodies of patent and wildlife conservation law are orthogonal. That is, these bodies of law are entirely separate and do not interact, except at one critical point: possession of tangible specimens. The evaluation conducted here confirms that these two bodies of law have evolved in entirely separate domains, are essentially independent, and are mutually non-contingent. They do, however, intersect at the critical point of physical possession of wildlife specimens. Possession of physical property in wildlife specimens is necessary to make patentable inventions. Furthermore, possession is the critical pivot in governmental control of wildlife under conservation laws. This single-point intersection creates an orthogonal relationship between these bodies of law that has legal and policy implications. For example, at these physical property intersections, wildlife conservation law generally fails to control patent-related market forces. Moreover, valid patent rights may be obtained in spite of violations of wildlife law. The failure to control the patenting of inventions made through the possession of wildlife specimens produces natural resource policy and management problems, including a market failure in wildlife resource maintenance, a type of tragedy of the commons in the new resource of biotechnological utilities from wildlife, and a failure of the linkage between technological value of wildlife and its sustainable conservation. BIOGRAPHICAL SKETCH Richard Stuart Cahoon was born on April 28, 1954, in Salt Lake City, Utah, to Reynolds F. and Margaret M. Cahoon. He spent his boyhood years in Salt Lake City and graduated with his bachelor’s degrees from the University of Utah. He married J’Nelle Hathaway in June of 1980 in Salt Lake City. They moved to Bozeman, Montana, where Richard received his master’s degree from Montana State University and they had their first child, daughter Lauren, in 1982. Returning to Salt Lake City, they had their second child, daughter Lindsey, in 1986. After living in both Bozeman and Salt Lake City for several years, in 1990 the family moved to Ithaca, New York, where Richard took a position with Cornell University. Their third child, son Lochlan, was born near Ithaca in 1993. Except for final submittal of his doctoral dissertation, Richard completed all requirements for his PhD in Natural Resources at Cornell in 2003. iii ACKNOWLEDGMENTS This dissertation has required many years to complete. Along the way, a number of individuals have provided a variety of support that has combined to make this possible. To each of these friends, colleagues, and especially family, I owe my sincere appreciation. Tom Eisner and Gerald Meinwald provided the initial inspiration for this study. H. Walter Hauessler gave me the freedom to pursue this research while employed at Cornell University. I appreciate the admissions committee of the Cornell Depart of Natural Resources, who required that I develop a thorough research plan before embarking on the work. Natural Resources faculty Richard McNeill and Ray Oglesby provided early guidance, and Jim Lassoie, chair of the department, was always encouraging and supportive. Several graduate students in Natural Resources provided intellectual stimulation and encouragement, especially Anthony Artuso. I also appreciate the collegial collaboration of Natural Resource faculty Tom Gavin, and the opportunity to refine my ideas as a guest lecturer in his class on biological conservation. I’d also like to acknowledge the Natural Resources graduate students in the colloquium that I co-chaired with Tom Gavin, as they conducted much of the research summarized in Table 1.1. Patrice Switkin provided a significant amount of initial legal research that formed the basis of the early chapters. I appreciate the useful discussions with Henry Shue and Dick Baer that helped me develop the ethics aspects of this work. I particularly appreciate the time Dick Baer took in reviewing and carefully critiquing my ethics chapter. I would like to thank William Lesser and Jon Conrad of the Applied Economics and Management faculty, who reviewed and commented on the economics chapter. Discussions of natural resource economics with Travis Lybbert, Chris Barrett, iv and Terry Anderson were also very useful. Regarding the economics aspect of my work, I am most indebted to David Allee, who, as an original member of my committee, provided significant advice. Sadly, David died before this work was completed. He was a congenial colleague and an enthusiastic supporter of my research efforts—I learned a great deal from him. I appreciate the ongoing encouragement of my friend and professional colleague, Nicholas Zelver, who has waited patiently for years to read this completed study. My dissertation committee has provided the major input and impetus for development and refinement of this work. My chair, David Pimentel, has provided ongoing guidance, encouragement, and input, and has carefully scrutinized the work. Ron Herring provided a great deal of input, especially in the critical middle phase of the research and during our collaboration as conference co-chairs. Jeff Rachlinski provided useful input in the legal background and analysis. David Bates provided me with significant advice on overall structure, key phrasing, and premise development, particularly in the final writing phase. I am heavily indebted to Danielle Silva who did much of the word processing of the text. And, a special thank you to Kristen Ebert-Wagner, a superb editor, who has added immeasurably to the coherence and readability of the dissertation. Of course, I want to thank my children Lauren, Lindsey, and Lochlan, who are the hidden motivation in this work, and so much of what I try to accomplish. Finally, and most importantly, my profoundest gratitude goes to my wife, J’Nelle, for her many years of unwavering support as I pursued my goal. Her loyalty, love, and faith in me have been the cornerstone of my perseverance to finish this work. Despite the years of weekends and evenings conducting research, and the writing of v drafts and many re-drafts, she never questioned that we would complete this dissertation. vi TABLE OF CONTENTS BIOGRAPHICAL SKETCH.........................................................................................iii ACKNOWLEDGMENTS.............................................................................................iv TABLE OF CONTENTS .............................................................................................vii LIST OF FIGURES........................................................................................................x LIST OF TABLES ........................................................................................................xi CHAPTER 1: INTRODUCTION...................................................................................1 1.1 The Fundamental Question.........................................................................1 1.2 Research Goal, Strategy, and Scope of Work ............................................5 1.3 Background.................................................................................................6 1.4 Case Studies..............................................................................................29 CHAPTER 2: PATENT PROPERTY IN BIOLOGICAL SUBJECT MATTER........32 2.1 Introduction ..............................................................................................32 2.2 The Patent and Its Rational Basis.............................................................32 2.3 U.S. Patent Law........................................................................................35 2.4 A History of Biological Subject Matter Patentability ..............................39 2.5 The Current Status of the Patentability of Biological Subject Matter......55 2.6 The Scope of Patent Rights and the Patentability of Organisms per se ...61 CHAPTER 3: PROPERTY IN WILDLIFE .................................................................64 3.1 Introduction ..............................................................................................64 3.2 A