The U.S. Supreme Court has granted a certiorari petition filed by Bowman in a case involving the issue of whether sale of second-generation seed by an authorized seller did not exhaust the patentee’s rights in its genetically altered seed.
Bowman purchased commodity seed containing Roundup Ready seeds from one of Monsanto’s licensed seed producers, used it for planting and then saved and replanted the seeds he harvested. All sales to growers, whether from Monsanto or one of its licensed producers, are subject to a standard form limited-use license. Under the license agreement, growers who buy the seeds can only use them for one crop season and cannot replant the progeny of the licensed seeds.
In December 2010, the Federal Circuit ruled in favor of Monsanto and found that while farmers have the right to use commodity seeds as feed, or for any other conceivable use, they cannot replicate patented technology by planting the seeds in the ground to create newly infringing genetic material, seeds and plants.
In his petition for certiorari, Bowman argued that the ability to make second-generation seed is an inherent characteristic of seeds and that his natural and foreseeable use of the seeds to produce second-generation seeds is permitted under the first sale doctrine, regardless of whether he sells the seeds for use as feed or replants them.
The solicitor general filed a brief in support of Monsanto, advising against granting cert and agreeing with the Federal Circuit that the first sale doctrine does not extend to second-generation seed and that the second-generation of a self-replicating patented invention is a “newly infringing article.” The Federal Circuit and solicitor general recognized that the interpretation of the first sale doctrine advocated by Bowman would severely limit the ability of biotechnology companies like Monsanto to recoup their sizable investment in developing agricultural traits