Antoinette M. Tease Montana Patent
Intellections

Canadian Supreme Court Upholds Monsanto Patent on Herbicide-Resistance Gene and Extends Patent Protection to Plants Containing the Gene

In our March 2004 newsletter, we talked about the Canadian Supreme Court decision in Harvard College v. Canada. Breaking ranks with the United States, the Canadian Supreme Court held in Harvard College that “higher” life forms are not patentable. In a decision handed down last month, the same court held that a patent on a gene for herbicide resistance and cells containing that gene also covered plants incorporating that gene. Although the majority professed that the key issue was the interpretation of the word “use” as it is used in the Patent Act, the real issue was whether and to what extent the court was going to follow its previous ruling that plants are higher life forms and, therefore, unpatentable.

In Schmeiser v. Monsanto Canada Inc., Schmeiser, a Saskatchewan canola farmer, had a practice of saving and developing his own seed. Several farmers in his area had chosen to license from Monsanto the seed for Roundup Ready® canola, a variety of canola containing genes that have been modified to be resistant to herbicides like Roundup® that contain glyphosate. The license required the farmers not to sell or give the seed away to any third party, and it prohibited them from saving seed for replanting or inventory.

Schmeiser chose not to obtain a license from Monsanto. Instead, seed from the neighboring farmers' Roundup Ready® canola blew over onto Schmeiser's farm, apparently unbeknownst to him. When he sprayed his crop with Roundup®, he discovered that 60 percent of the crop was Roundup®-resistant. He subsequently harvested the Roundup®-resistant plants and stored the harvest over the winter. The following spring he took that harvest to a seed treatment plant and had it treated for use as seed. He planted the treated seed over 1,000 acres, and tests showed that 95 to 98 of that crop was in fact Roundup®-resistant.

On February 23, 1993, Monsanto obtained a patent in Canada entitled “Glyphosate-Resistant Plants.” (Monsanto obtained a similar patent in the United States on the same day.) Despite the title, there was no claim for an actual plant, but only for the modified genes and cells containing those genes. Before the case reached the Canadian Supreme Court, the lower courts had held that the Monsanto patent was valid and that it prohibited the use of plants containing the patented genes. The Canadian Supreme Court agreed. According to the majority, Schmeiser was not guilty of “making” the patented invention because he did not genetically

engineer anything, but he was guilty of “using” Monsanto's invention because the plants that he was growing and harvesting contained the patented genes. The majority stated that use of a patented invention within something else that is unpatented still constitutes patent infringement. The fact that Schmeiser intended to profit from Monsanto's invention was key to the majority's conclusion.

The dissent had difficulty reconciling the majority's opinion with the court's prior ruling in Harvard College. According to the dissent, the issue was straightforward—plants are higher life forms, higher life forms are not patentable, the Monsanto patent did not include any claim for a plant containing the modified genes, and therefore saving, planting or selling seed from glyphosate-resistant plants is not patent infringement. The dissent noted that extending patent protection to cover living organisms that contain a patented gene would effectively extend the patent term beyond twenty years.

Despite its apparent victory, Monsanto received nothing in the end. Ironically, having found that Schmeiser infringed the Monsanto patent, the court held that Monsanto could not recover any damages because Schmeiser sold the Roundup Ready® canola for feed, not for other farmers to plant. As such, Schmeiser had not obtained any premium for the Roundup Ready® canola, and Monsanto had not incurred any damages as a result of the patent infringement.

Having laid down the gauntlet in Harvard College, the Canadian Supreme Court struggled in Schmeiser to draw the line between patentable “lower” life forms and unpatentable “higher” life forms. The result in Schmeiser raises more questions than it answers, and it may allow the exception to swallow the rule. If the rule is that higher life forms are not patentable, and the exception is that patent coverage can extend to something that is unpatentable in and of itself but that incorporates something that is patentable, and if modified genes are patentable, then what about a modified gene that is inserted into a human chromosome? Would the Canadian Supreme Court say that the human being is not patentable, but patent coverage extends to the human being because he or she possesses the modified gene? The Canadian Supreme Court deserves credit for grappling with these difficult ethical issues, many of which were avoided by the U.S. Supreme Court's ruling in Diamond v. Chakrabarty (see our March 2004 IntellectionsTM newsletter), but Canadian courts will likely struggle with these and other similarly difficult questions for some time.

Patent Law for the New West
The information in this newsletter is provided for informational purposes only and should not be considered legal advice. Please consult a qualified attorney for advice on a specific legal matter.

© 2004 Antoinette M. Tease, P.L.L.C. All Rights Reserved.

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