GUEST COLUMN: Patent holders should be pleased with Supreme Court ruling

Global IP-tekno(EDITOR’S NOTE: Teknovation.biz welcomes guest columns with the understanding that they have to be appropriate for this service and approved before posting. The following guest column was submitted by Esther Bell, Chief Executive Officer of Global Intellectual Property Asset Management, PLLC in Knoxville. In preparation for posting the column, we asked Bell the significance of the case. She said any patent holder should be pleased with the outcome. “While this case involves a type of self-replicating biotechnology – a genetically modified soybean seed, companies whose technology portfolio is outside the scope of biotechnology should take note: the Supreme Court refused to accept the defense of non-infringement due to self-replication.  Companies working in any technology area where self-replication occurs should clearly document all circumstances surrounding the self-replication, to proactively prepare accurate research and development records in the event of an infringement lawsuit.”)

By Esther Bell, Global Intellectual Property Asset Management, PLLC

The Supreme Court of the United States unanimously affirmed extant patent exhaustion doctrine in Bowman v. Monsanto,[1] noting the doctrine, “gives the purchaser, or any subsequent owner, a right to use or resell that article [but] does not allow the purchaser to make new copies of the patented invention.”[2]

Vernon Hugh Bowman is a septuagenarian Indiana farmer.[3]  Mr. Bowman’s crops include winter wheat and soybeans.[4]  During the growing seasons relevant to the infringement claims, Mr. Bowman grew two crops of soybeans.[5]  For the first crop, Bowman purchased[6] soybeans from a licensed producer[7] of Monsanto’s genetically modified soybeans.[9]  Upon harvesting, Bowman sold these beans.[8]  For the second crop, Bowman purchased soybeans from a local grain elevator.[10]  Bowman sprayed this second crop with a herbicide, thus only the plants grown from herbicide-resistant genetically modified beans grew to maturity and produced offspring beans.[11]  Beans harvested from the second crop were neither used for personal consumption by Bowman, nor as feedstock for his animals, but, rather, Bowman retained the harvested second crop soybeans to utilize them as planting beans for a future crop.[12]

The doctrine of patent exhaustion has long granted to a purchaser of a patented product, or a subsequent owner, “the right to use [or] sell” the product as he or she desires.[13]  This doctrine was reaffirmed in recent years to clarify, “the initial authorized sale of a patented item terminates all patent rights to that item.”[14]

In Bowman, Justice Kagan, writing for a unified Court, quoted United States v. Univis Lens Co.,[15] “’[T]he purpose of the patent law is fulfilled with respect to any particular article when the patentee has received his reward . . . by the sale of the article’: once that ‘purpose is realized the patent law affords no basis for restraining the use and enjoyment of the thing sold.’”[16]  The Court noted, however, that the unrestrained use and enjoyment did not parlay into a right to copy the patented item.[17]

The political landscape of GMOs post-Bowman is complex; some physicians[18] and, indeed, entire countries,[19] consider GMOs to be potentially harmful or toxic.  Dr. Charles F. Sydnor, M.D., voicing his concern for the health of generations yet unborn, correlates present unknowns about GMOs to oleo-based trans fats[20] and notes, “lack of evidence of harm does not equate to evidence of no harm.”[21]  Further, the recent U.S. Supreme Court ruling in favor of patents for “complimentary DNA (cDNA)”[22] adds yet another dimension to the tensions and concerns surrounding patent rights regarding substances and organisms containing some form of genetic manipulation.

The long-term effects – on health, law, business and policy – surrounding the Bowman decision will remain unknown for some time to come.  In the interim, however, we will presumably see an upswing in research and patenting in biotechnology, based upon the ruling in this case.

 


[1] 569 U.S. ____ (2013), No. 11-796 (May 13, 2013).

[2] Id. at 1.

[3] See Brief for Petitioner, p. 6.

[4] Id.

[5] Id. at 7.

[6] Inherent in the purchase from a licensed producer is included a separate license agreement, a “Technology Agreement,” which defines the purchaser’s rights regarding the patented technology contained within the seeds themselves.  See Brief for Respondent, p. 3.

[7] Pioneer Hi-Bred International, Inc., Brief for Petitioner, p. 6.

[8] Monsanto has a broad patent portfolio, including numerous patents on herbicides, such as glyphosate-based RoundUp®, as well as various species of plant crops that have been genetically modified to be resistant to such herbicides.  These herbicide-resistant plant variants, or genetically modified organics (GMOs), are identified as RoundUp Ready® and include, inter alia, corn, soybeans, alfalfa and canola.

See http://www.monsanto.com/products/Pages/product-patents.aspx.

[9] Brief for Petitioner, p. 7.

[10] Id.

[11] Id. at 8.

[12] Id. at 7.

[13] United States v. Univis Lens Co., 316 U.S. 241, 249-250 (1942).

[14] Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625 (2008).

[15] 316 U.S. 241 (1942).

[16] Id. at 251.

[17] Bowman v. Monsanto, 569 U.S. ____(2013); No. 11-796, at 4..  See also, Mitchell v. Hawley, 16 Wall. 544, 548 (1873); Wilbur-Ellis Co., v. Kuther, 377 U.S. 422, 424 (1974); 35 U.S.C. §154 (1964 ed.)

[18] Interview with Dr. Charles F. Sydnor, M.D., June 17, 2013.  Dr. Sydnor, whose practice is located in Burlington, North Carolina, is a licensed physician; he also owns/oversees Braeburn Farm, located in Snow Camp, NC.  Braeburn Farm produces beef, pork and poultry using organic and holistic farming methods.

[20] During World War II, the United States rationed several goods, including butter.  Oleo, also known as oleomargarine, is comprised of liquid edible fats from plants; hydrogenation of the unsaturated fatty acid contained in oleo results in trans fats, which are known to be linked to such diseases as coronary heart disease, the leading cause of death in the United States.  See http://www.cdc.gov/nutrition/everyone/basics/fat/transfat.html.  At the time of World War II, when oleo was first promoted for general use, the health risks associated with oleo were unknown; Dr. Sydnor represents a growing number of physicians who are concerned that unforeseen health issues inherent in GMOs will not become evident for generations to come, by which time the harm to consumers will be irreparable.

[21] Interview, June 17, 2013.

[22] See Association for Molecular Pathology et al. v. Myriad Genetics, Inc., et al., 569 U.S. _____ (2013), No. 12-398 (June 13, 2013).

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