Patent rights and biotech seeds

July August 2013

The Supreme Court of the United States (SCOTUS) heard arguments on February 18, 2013, involving patent infringement with respect to genetically engineered (GE) soybeans. Seed producer Monsanto Co., St. Louis, Missouri, sued Vernon Bowman, an Indiana farmer who had planted the offspring of Monsanto’s patented glyphosate (Roundup pesticide)-resistant soybean in contradiction to the contract that Monsanto makes its seed purchasers sign, agreeing to plant the purchased seeds in one (and only one) season. Furthermore, the farmer may not save harvested seeds for replanting, nor may the famer supply them to anyone else for that purpose.

Bowman’s unorthodox approach was to purchase commodity soybeans from the local elevator to plant for a risky late-season crop on which he didn’t want to spend much money. He correctly reasoned that many of these commodity beans, which are typically sold as animal feed, would be Roundup resistant. He then saved part of this late-season crop to plant in subsequent years and sold the rest to the local elevator without paying fees to Monsanto. Bowman argued that Monsanto’s patent was exhausted when he purchased the commodity beans.

In a unanimous decision, the nine justices of SCOTUS ruled against Bowman and for Monsanto on May 13, 2013. The opinion of the court, was written by Justice Elena Kagan.

Kagan wrote: “Under the doctrine of patent exhaustion, the authorized sale of a patented article gives the purchaser, or any subsequent owner, a right to use or resell that article. Such a sale, however, does not allow the purchaser to make new copies of the patented invention. The question in this case is whether a farmer who buys patented seeds may reproduce them through planting and harvesting without the patent holder’s permission. We hold that he may not.”

Elsewhere in the opinion, Kagan said: “Under the patent exhaustion doctrine, Bowman could resell the patented soybeans he purchased from the grain elevator; so too he could consume the beans himself or feed them to his animals. Monsanto, although the patent holder, would have no business interfering in those uses of Roundup Ready beans. But the exhaustion doctrine does not enable Bowman to make additional [italics in the original] patented soybeans without Monsanto’s permission (either express or implied). And that is precisely what Bowman did.” Kagan also took care to point out that one of the definitions of “to make” is “to plant and raise (a crop).”

Finally, Bowman argued that “soybeans naturally ‘self-replicate or sprout unless stored in a controlled manner,’ and thus ‘it was the planted soybean, not Bowman’ himself, that made replicas of Monsanto’s patented invention..

"It was Bowman, and not the bean, who controlled the reproduction . . . of Monsanto’s patented invention.”

While many companies and organizations involved in biotechnology had hoped that the SCOTUS decision would establish widespread precedents concerning biotech patents, the decision was confined to the case at hand. Kagan wrote: “[O]ur holding today is limited—addressing the situation before us, rather than every one involving a self-replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. . . . In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct.”