Wearing a McDonald’s blue garrison-style hat—red hats signified management—I often worked at the french fry station during my pimply high school years in the 1970s. If you had asked me anything about the julienned potatoes I watched bubbling around in hot oil, I would have given you a clipped, teenage response, “I dunno.” I had more important things on my mind, like my girlfriend Lynn who worked at the local Dairy Queen.
Forty years later, I know precisely what I would salt, scoop and funnel into paper containers in seemingly never-ending quantities: the historic Russet Burbank potato. Luther Burbank—the (once) famous “Wizard of Horticulture”—developed this potato variety in 1870. It would become the mainstay of the McDonald’s franchise empire, with over billions and billions sold.
Like other formerly indistinguishable fruit and vegetable commodities, potatoes are now morphing into a plethora of trademarked, patentable varieties. The most recent variety to make news headlines is the Innate™ potato, a genetically modified Russet Burbank potato owned by the J.R. Simplot Company. You won’t find them at McDonald’s anytime soon though. “McDonald’s USA does not source GMO potatoes, nor do we have current plans to change our sourcing practices.”
This brief article focuses on the history of potatoes and their patentable status in the United States. As part of this discussion, the poor market reception potatoes first received during the Columbian Exchange is compared to the predictable consumer angst associated with the Innate™ potato’s genetic engineering.
The First “Patatas”
Long before Luther Burbank, indigenous farmers in the Andean highlands (along the modern day border of Peru and Bolivia) cultivated and domesticated potatoes. Spanish conquistadors first encountered the potato in 1532 and noted its importance to the Incan Empire. The Incas would preserve potatoes by drying and mashing them into a substance call chuñu, which could be stored for up to 10 years. Early reports often confused potatoes (patatas) with sweet potatoes (batatas), even though they are from different plant families.
Along with other New World foodstuffs—like cassava (also called manioc), tomatoes and corn—potatoes would make their way across the Atlantic to Europe during the Columbian Exchange. Potatoes were not well received at first, but rather regarded with “suspicion, distaste and fear” and as unfit for human consumption. Alan Davidson, a leading food historian, describes the probable Spanish reaction to potatoes:
The potato was the first vegetable of their acquaintance to be grown from tubers rather than from seed. Its appearance seemed as odd as its method of propagation, and under the prevailing Doctrine of Signatures, whereby a fruit or vegetable’s appearance indicated what part of the body it would affect (hence walnuts being recommended for diseases of the brain and red beets for anemia), it was even thought that eating potatoes led to leprosy, for the tubers or flesh-colored underground nodules were likened to leprous growths. Moreover, the plant itself had a slightly sinister appearance, bearing a resemblance to deadly nightshade, a fellow member of the family Solanaceae.
Food shortages associated with the Revolutionary Wars of the late 18th century would lead to widespread cultivation of potatoes in Europe. In fact, many Irish people would survive on milk and potatoes alone.
When propagated through cuttings, however, the inherited strengths and weaknesses of the potatoes are passed down through generations. By the early 19th century, potatoes had all descended from a handful of varieties. “Through constant inbreeding, new varieties were created, yet genetically they were all nearly identical. When the blight struck [i.e., the “Great Famine”], none of these old types [of potatoes] were resistant to it, so the disease spread quickly and lethally.” Experimentation in the 1850s and 1860s would cross old, deteriorating potatoes with hardier wild varieties from Mexico and South America, leading to the some of the most popular heirloom potatoes of our present age, including the Early Rose from which the Russet Burbank potato was developed.
Alan Davidson summarizes the arc of potato acceptance around the world:
Thus the general picture that emerges is that the potato required a catalyst to become popular. In particular, it tended to establish itself where food was short—often in the wake of a famine—because it produces so much in the way of calories, and so quickly too, from small plots of land. Wherever human exigencies have given it a chance to display its virtues, it has stayed on as a dietary staple.
Patenting the Potato in the United States
Until the early 20th century, plants were considered products of nature and therefore deemed unpatentable in the United States. The Plant Patent Act of 1930 (the “PPA”) changed that dynamic. The PPA sought to level the playing field between plant breeders and their mechanical and chemical inventor counterparts. Thomas Edison supported the plant patent legislation, hoping that it would “I am sure, give us many [Luther] Burbanks.”
Even had it been enacted during Luther Burbank’s lifetime, the PPA would not have protected his potato cross-breeding efforts. The operative PPA provision, 35 U.S.C. § 161, specifically excludes tuber propagated plants:
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. (Emphasis added.)
In pushing for the PPA’s enactment, the “demand for patent protection came primarily from rose and fruit tree breeders,” as “only asexual reproduction is of commercial importance in these fields” Opposition came from farmers who propagate by seeding. Only “Irish” potatoes were being cultivated asexually. Congress’s compromise result excluded tuber-propagated plants from PPA protection. The legislative history justifies the tuber propagated plant exclusion by stating that “the only plants covered by the term ‘tuber-propagated’ would be the Irish potato and the Jerusalem artichoke. This exception is made because this group alone, among asexually reproduced plants, is propagated by the same part of the plant that is sold as food.”
Forty years later, perceived deficiencies in the PPA led to the enactment of the Plant Variety Protection Act (“PVPA”) of 1970, codified at 7 U.S.C. § 2321, et seq. This law established patent-like rights for new varieties of seed-propagated plants. However, tuber-propagated plants were again excluded from PVPA coverage from 1970 until 1994, when the potato industry successfully lobbied for their inclusion by defining the PVPA’s term “seed” to include “the tuber or part of the tuber used for propagation.” See 7 U.S.C. § 2401(a)(5).
By 1994, other patent law case developments had already paved the way for patenting potatoes under the U.S. utility patent provisions, rendering PPA and PVPA legal protections rather superfluous. In Diamond v. Chakrabarty, 477 U.S. 303 (1980), the Supreme Court held that patent law covered microorganisms, rejecting an argument that patent law could not cover living things. In Ex Parte Hibberd, 227 U.S.P.Q. 443 (1985), the Board of Patent Appeals and Interferences adopted the Supreme Court’s Chakrabarty reasoning and reversed a rejection of a patent involving maize (corn) plant technology. The patenting circle would be completed by the Supreme Court’s holding in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (2001). J.E.M. Ag Supply holds that newly discovered plant breeds are patentable subject matter under general U.S. patent law notwithstanding additional protections potentially available under the Plant Patent Act or Plant Variety Protection Act.
With the encouraging Ex Parte Hibberd decision, the filing of utility patent applications seeking plant patent type protection for potatoes began slowly at first, and then accelerated. The first utility patent for a “novel potato cultivar” issued on September 29, 1987 (U.S. Patent No. 4,696,674). Frito-Lay, especially, would invest heavily in obtaining potato plant patents. Its primary inventor, Dr. Robert Hoopes, holds more potato patents than anyone in the world. See, e.g., U.S. Patent No. 8,362,327 issued on January 29, 2013, for a “Newton” potato cultivar.”
Social Controversy Surrounding Genetically Engineered Potatoes
J.R. Simplot Company obtained a U.S. patent for its Innate™ potato in November 2014. The company touts the following advantages of its Innate™ potatoes:
- Reduced black spot from bruising results in potatoes that are less prone to pressure bruising during storage, a condition that eliminates many potatoes from going to market and costs growers millions of dollars every year. This same trait also prevents potatoes from turning brown after they are cut during preparation.
- Reduced asparagine reduces the potential for the formation of acrylamide, a chemical compound that is created when potatoes, wheat, coffee, and other foods are cooked at high temperatures. Innate™ potatoes have up to 70% less acrylamide than other potatoes cooked at the same high temperatures. Future varieties will reduce acrylamide by up to 90%. [Acrylamide exposure may pose a risk for several types of cancer.]
- Reduced sugars which, under certain conditions, provide potatoes with a consistent golden color, providing ideal taste and texture qualities for consumers.
The Innate™ potato achieves these beneficial results through the insertion of a DNA sequence (native to potatoes) into the genome of the potato that silences genes involved in the expression of black spot bruises, asparagine accumulation and senescence sweetening. See U.S. Patent No. 8,669,964 (“Potato Cultivar W8”), at col. 2, lines 7-12.
A scientist who worked on the Innate™ potato’s field trials describes its innovations in more general terms:
“The Innate potato is the most promising advancement in the potato industry I’ve seen in my 30 years studying agriculture,” said David S. Douches, Ph.D. at the Department of Crop and Soil Sciences at Michigan State University who has implemented field trials of Innate. “This potato delivers significant health and sustainability benefits, all by using the potato’s own DNA. Such advancements haven’t been possible using traditional breeding.”
Simplot used the techniques of modern biotechnology to accelerate the traditional breeding process and introduce new traits by triggering the potato’s own RNA interference (RNAi) pathway. RNAi is a natural cellular process commonly used by plants and animals to modulate expression of certain genes, and has been used effectively in multiple commercial crops sold over the last decade. “Unlike traditional methods of breeding which introduce random mutations associated with dozens of genes, the method used to develop Innate potatoes is precise,” said Douches.
In spite of the apparent health and sustainability advantages associated with the Innate™ potato, its GMO status renders it a pariah for end-consumers. When news of the USDA’s regulatory approval for the Innate™ potato made headlines, one blog post commentator cited McDonald’s anti-GMO policy for the proposition that “not all taters are created equal.”
McDonald’s refusal to source GMO ingredients for its food products reflects the pragmatic realities of a consumer-facing company. While the Innate™ potato may be safe to eat from a strictly food safety perspective, what one chooses to ingest repetitively involves a psychological calculus, often overlaid with one’s political orientations. “Food satisfaction” is a much different consumption equation in which “food safety” is only one of the significant variables.
Proponents of genetically engineered foodstuffs often argue that anti-GMO consumers are intellectually challenged, to wit, “outraged Luddites will no doubt spin these positive [Innate™ potato] attributes into the very embodiment of evil.” What GMO proponents usually fail to acknowledge, however, is that food choices are much more about psychology and sociology than a rote analysis of food safety facts. What we choose to ingest becomes a barometer of our personal, political and religious status. Hunger strikes, eating disorders and orthorexia (i.e., an obsession with eating foods that one considers healthy) all reflect the profound political and psychological control aspects of food intake.
In point of fact, those who ridicule GMO food labeling advocates as feeble-minded should look in the mirror. They would fail Sociology or Psychology 101. Their cramped understanding of food ingestion psychology substitutes a notion of “scientific progress” as the measure for a much more expansive and elusive concept of personal food satisfaction and associated well-being. The intellectual foundations for understanding food preferences are cross-disciplinary and not very well understood, possibly for some time to come in the annals of academic research.
 A. Davidson, “Europeans’ Wary Encounter with Tomatoes, Potatoes, and Other New World Foods, Chapter One, p. 4, from Chilies to Chocolate: Food the Americas Gave the World (1992).
 W. Weaver, “Heirloom Potato Varieties,” Mother Earth News (dated March 14, 2013), accessed at http://www.motherearthnews.com/organic-gardening/heirloom-potato-varieties-zewz1303zsch.aspx
 See fn. 4, p. 14.
 “Plant Patents,” Senate Report No. 315 (dated April 2, 1930), p. 3.
 D. Daus, “Plant Patents: A Potentially Extinct Variety,” Economic Botany, Vol. 21, No. 4, at 388 (October 1967).
 Id., p. 5.
 See House Report No. 103-699, 1994 U.S. Code Cong. and Adm. News., at 2415.
 See http://margaretmsavino.photoshelter.com/image/I00003bOwRhz4T94 (showing Dr. Robert W. Hoopes standing in front of his “Wall of Potato Variety Patents” at the Frito-Lay Research facility in Rhinelander, Wisconsin).
 See http://www.foodsafetynews.com/2015/08/usda-gives-ge-potato-nonregulated-status/#.VfMcuhFVhBc and associated comments.