In a ruling that has implications for a number of industries, including agriculture and biotechnology, the Supreme Court ruled unanimously on May 13 that the concept of patent exhaustion did not allow farmers to freely use patented genetically modified soybeans to create new seeds for subsequent planting seasons.
In Bowman v. Monsanto, the Court held that "the authorized sale of a patented article gives the purchaser, or any subsequent owner, a right to use or resell that article. Such a sale, however, does not allow the purchaser to make new copies of the patented invention." The Court also held that the term "make," in the grant of exclusivity to the patentee and the prohibition of patent infringement (Sections 154 and 271 of the patent statute), includes "to plant and raise (a crop)." To hold otherwise, the Court opined, would deprive the patentee of its monopoly.
The Court buttressed its holding with a citation to its earlier decision in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l Inc., which held that the Patent Act, unlike the Plant Variety Protection Act, contains no exceptions for saving seeds. In that regard, the Court stated that applying the patent exhaustion doctrine to protect conduct such as Bowman's would run afoul of the Court's holding in the J.E.M. case. Accordingly, the Court dismissed petitioner Bowman's "seeds-are-special" and "blame-the-bean" arguments as scientifically incorrect and legally unsupportable.
Specifically, Bowman tried to argue that soybeans naturally self-replicate or sprout unless they are stored in a controlled manner, and that it was the plants, and not Bowman himself, that created replicas of the patented invention. In response, the Court noted that it was Bowman who purchased the commodity seeds, planted them, tended them and treated them, exploiting their patented resistance to the RoundUp herbicide, after which he harvested more seeds that he either marketed or saved to plant again. As such, the Court dismissed the "blame-the-bean" defense, identifying petitioner Bowman, not the soybean, as the infringer.
While the Court expressly limits its decision in Bowman v. Monsanto to the facts of that case, the decision nonetheless can be seen as a major victory for the biotechnology industry, as it shows that the Supreme Court recognizes patent protection as extending to the progeny of self-reproducing biological inventions.