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Bowman v. Monsanto Co. Raises Concerns for Buyers of Patented Self-Replicating Products

June 13, 2013

Hamilton Brook Smith Reynolds Alert

Contributing Writer Chace Craig from Hamilton Brook Smith Reynolds

  • The doctrine of patent exhaustion does not protect replication of genetically modified soybean seeds for planting and harvesting.
  • The Supreme Court's decision raises concerns of potential patent infringement for those who purchase and reproduce patented self-replicating products.

On May 13, 2013, the Supreme Court unanimously ruled in Bowman v. Monsanto Co. that the doctrine of patent exhaustion will not protect farmers who buy and reproduce patented seeds without the patentee's consent.  Although the Court stated that their decision applies only to situations involving the unauthorized production of patented seeds, the case may carry wider implications for other technologies that self-replicate, such as bacteria or other biotechnology products. 
Monsanto owns two patents related to genetically modified soybeans resistant to the herbicide glyphosate (Roundup Ready Seeds).  Monsanto and its vendors sold the patented soybeans to farmers under a license that limited use of the seeds to a single generation of planting and harvest.  Vernon Bowman, a farmer in Indiana, attempted to circumvent the patent by purchasing harvested soybeans from a grain elevator, re-planting the seeds in his fields, and treating with glyphosate to select for herbicide-resistant seeds.  After the herbicide was applied to the crop, only the genetically modified soybeans survived.  He then harvested seeds from this crop and eventually had a supply of resistant seeds for future plantings, which now had the same genetic modifications as Monsanto's patented seeds.  Monsanto sued Bowman for patent infringement upon learning of the farmer's practice.
The Court found that Bowman had created new copies of the genetically-modified seeds protected by Monsanto's patents and that Bowman could not use the doctrine of patent exhaustion as a defense for his actions.  Under the doctrine of patent exhaustion, patent rights to a product end after initial sale of the product.  Patent exhaustion protects buyers from patent infringement when they use or re-sell a patented product under certain conditions.  However, a patent owner still retains the ability to stop the buyer of a patented product from re-creating the product without the patent owner's consent.  Therefore, Bowman's practice constituted making new copies of Monsanto's patented seeds, which means Bowman infringed Monsanto's patents.

However, the Court attempted to rein in the scope of the opinion's impact by limiting it in a couple of ways.  The Court recognized that self-replication of a patented invention could occur without the control of the buyer.  For example, natural replication of a patented bacterium may not be infringement without some other element of control, such as antibiotic resistance selection.  Moreover, if reproduction of the patented product is inherently needed in order to use the product, there may be no infringement.  Thus, the Court specifically limited the scope of their decision to the Bowman situation, and many questions regarding self-replicating technology in other situations remain unanswered.
Practical Implications

The Court's decision could have important implications for researchers and inventors in the biotechnology industry.  Monsanto's patents include claims drawn to a chimeric gene expressed in plant cells and claims drawn to genetically modified soybean seeds.  Bowman, through his own acts, controlled the reproduction of the patented seeds, selected for the desired herbicide-resistant trait, and used the selected seeds for the purpose for which they were originally sold.  Researchers who purchase patented organisms as research tools for experimentation could have a legitimate concern about patent infringement when using conventional lab techniques to maintain stocks of patented cell lines, bacteria or virus vectors. 
Bowman v. Monsanto Co. raises concerns of infringement for researchers using patented self-replicating technologies as research tools.  On the other hand, the case may bolster patent protection for biotechnology innovators, assuring that they are still provided with incentive to invent new technology.  A decision that would have allowed buyers of patented products to endlessly reproduce patented technology would have stripped many patents of their value.

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