In Bowman v. Monsanto Co., the U.S. Supreme Court ruled this week that a farmer who buys patented plant seeds may not reproduce them by planting and harvesting without the patent holder's permission. The court's holding was limited to this specific instance of planting and harvesting patented plant seed technology, and not to situations involving other self-replicating technologies.
The patented technology at issue was Monsanto's Roundup Ready® soybeans, which are resistant to Monsanto's glyphosate herbicide Roundup®. The technology enables farmers to spray crops with the glyphosate herbicide to kill weeds without damaging their crops. The patented trait is encoded in the plant's genetic material; therefore, it can be passed on from a planted seed to harvested soybeans.
Monsanto and licensed affiliates sell its Roundup Ready® soybean seeds to growers who agree to a special license agreement, which permits the grower to plant the purchased seed in one (and only one) season. The grower can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processer. The agreement precludes the grower from saving harvested soybeans for replanting or supplying them to anyone else for planting.
Monsanto sued Bowman, a farmer in Indiana, for patent infringement after Bowman purchased commodity seed from a local grain elevator, planted it as a late-season crop, applied glyphosate to the crop, saved harvested seed, and then planted subsequent crops from the harvested seed. In its infringement defense, Bowman raised the doctrine of patent exhaustion, arguing that Monsanto could not control his use of the soybeans because they were the subject of a prior authorized sale (from the local farmers to the local grain elevator).
Patent Exhaustion Doctrine Ruled Inapplicable
In its unanimous decision, the court ruled that patent exhaustion does not apply to the underlying facts of this case. Specifically, the "doctrine restricts a patentee's rights only as to the 'particular article' sold, [but] it leaves untouched the patentee's ability to prevent a buyer from making new copies of the patented item." According to the court, when Bowman purchased soybeans at the local grain elevator and then planted and harvested more beans than he started with, he "reproduced Monsanto's patented invention, [so] the exhaustion doctrine does not protect him."
This decision further secures a patentee's protection of plant- and seed-based technologies. It is consistent with the court's decision in J. E. M. Ag Supply, Inc. v. Pioneer Hi-red Int'l, Inc., 5334 U.S. 124 (2001), in which the court decided that an inventor could obtain a patent -- and not just a certificate issued under the Plant Variety Protection Act (PVPA) -- on a seed or plant. The Bowman decision is a clear and unambiguous victory for seed companies and their licensing programs for genetically modified seeds.
While some had hoped the court would weigh in on the exhaustion doctrine as it applies to all self-replicating technologies -- whether in the fields of biotechnology or software -- any limits to the exhaustion doctrine for such technologies will have to be decided another day.