IP Law: Rulings Focus On Genetic Testing And Modified Soybeans

, The Connecticut Law Tribune


After learning of Bowman's activities, Monsanto sued him for patent infringement. As a defense, Bowman argued that patent exhaustion applied. Pursuant to the patent exhaustion doctrine, the purchaser of a patented invention who obtained the invention through an authorized sale, as well as any subsequent owner, has the right to use or sell the invention without restraint. However, the purchaser does not obtain the right to copy the patented invention. Bowman claimed that because the glyphosate-resistant soybeans that he planted during his second season were the subject of an authorized sale, his actions were permissible. In other words, because other farmers sold their soybean seed to the grain elevator, Bowman argued that Monsanto had no patent rights over the soybean seed that Bowman used for his second season.

The Supreme Court rejected Bowman's defense and explained that his practice of growing plants from commodity soybeans was not protected by the patent exhaustion doctrine. The patent exhaustion doctrine only applied to the particular items that were sold — i.e., the soybeans whose sales were authorized by Monsanto. Bowman could use the commodity soybeans that he purchased from the grain elevator for consumption or resale, but he could not use them to create additional crops without Monsanto's consent.

Lessons Learned

Both Myriad and Monsanto should be considered by those who seek to patent and commercialize inventions that relate to the life sciences, particularly those that concern genetically transformed materials. Despite the apparent limitations of these opinions, it is clear that the Supreme Court continues to believe that innovators should enjoy the benefits of patent protection when appropriate.

Notably, in Myriad, the Supreme Court did not exclude all DNA molecules from patent eligibility. The court indicated that as long as a DNA molecule is modified in some manner, it may be eligible for patent protection. Accordingly, an inventor may be able to obtain patent protection for a commercially useful DNA molecule — including one that may be used for genetic transformation — if it was created synthetically. Additionally, by specifically noting that its opinion did not apply to certain types of inventions, the Supreme Court avoided inadvertently expanding limitations on patentability.

Moreover, although the Supreme Court stated that its opinion in Monsanto is limited and addressed the particular case before the court, the opinion demonstrates that a patent holder can sell a patented, self-replicating organism while maintaining control over how the organism is used. As such, despite the limiting language of its opinion, it appears that the court accepts that a patent holder may place conditions on the sale of a self-replicating product, which maintains the benefits of patent protection. An inventor of a self-replicating invention — such as a genetically transformed plant or genetically transformed mammalian cell — may be able to obtain patent protection, sell its patented invention, and prevent the unauthorized replication of the invention. The Supreme Court has indicated that the patent exhaustion doctrine does not allow a purchaser to intentionally "copy" this type of invention in an unapproved manner.

As reflected in the Myriad and Monsanto opinions, the Supreme Court has not been reluctant to address patent cases concerning rapidly developing, complex technology. Indeed, the Supreme Court has indicated that it is willing to further clarify how patent protection applies to this type of technology. In doing so, the court has provided guidance for those who seek patent protection for inventions in the life sciences, ensured that patent protection for these types of advancements is attainable, and indicated how an inventor may seek to market such inventions.•

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