A case involving Monsanto asserting a patent over a farmer in Indiana has seen the Supreme Court of the United States of America apply the doctrine of equivalents to a particular example of a self-replicating product. Self-replicating products are most readily associated with the biological arts, where genetic material makes the self-replication possible. In this case, the US Court did not distinguish copying by self-replication from other types of copying and found that exhaustion applies only to the particular items sold and not to copies, whether they be self-replicants or not.

The specifics of Bowan v. Monsanto Co. et al., No. 11-796, involve the farmer buying “Roundup Ready” soybeans for his first annual crop from a company affiliated with the patent owner. “Roundup Ready” soybean seeds contain a genetic modification enabling the resulting crop to survive exposure to glyphosate, a very common herbicide. Glyphosate was discovered by a chemist employed by Monsanto to be herbicidal and is sold by Monsanto under the trade name “Roundup”. The infringing acts occurred when the farmer’s riskier later-season, second planting used seeds bought from a grain elevator in order to avoid the premium price charged by the patent owner. The choice of seeds from the grain elevator was motivated by the assumption that it was stocked with soybeans produced by local famers, most of which used “Roundup Ready” soybeans. In this way, the farmer still obtained the benefit of “Roundup Ready” soybeans.

In this case, which was decided on 13 May 2013, it was held that a patentee has an undiminished right to exclude others from making the thing the patent protects, whether that thing be an original or a copy. The reasoning given by Justice Kagan in the unanimous decision was that if simple reproduction was a non-infringing act, any patent would plummet in value after the first sale of the first item containing the invention, because the undiluted patent monopoly would extend until only the first transaction.

The basis for the doctrine of exhaustion has been previously explained by the Supreme Court in terms of the patent law being fulfilled with respect to any particular article when the patentee has received his reward by the sale of the article and that once that purpose is realized, the patent law affords no basis for restraining the use and enjoyment of the thing sold. The key point that worked in favor of Monsanto was that the doctrine applies only to the “particular article” and not to reproductions obtained from that thing sold. As the Court explained, this is because the patent holder has “received his reward” only for the “particular article” sold and not for subsequent recreations of it.

By applying this reasoning, the doctrine of exhaustion can be seen to be in line with the quid pro quo of the patent system. The patent owner makes the details of his/her invention publicly known and is then rewarded for this innovation by having the exclusive rights provided by the patent law. In turn, the benefit to famers from “Roundup Ready”, is that their crop production is made easier, because they can use glyphosate without killing their crop and they may consume or sell the soybeans for consumption.

The arguments presented by the farmer were that seeds are meant to be planted and that because seeds naturally sprout, it was the seed itself that made the reproduction and not the farmer. Both these arguments were dismissed, because they did not alter the fact that reproductions were made and in doing so, the farmer not only derived the benefit of the patented invention, but also avoided paying the premium price placed on the product covered by the patent.

The Court also briefly discussed that the more stringent requirements for obtaining a patent when compared with the requirements under the Plant Variety Protection Act are associated with greater protection. The presence of two different, but not conflicting, statutes affording protection for a plant variety also exist in Australia, where protection may be obtained under both the Australian Patents Act 1990 (Cth) and the Plant Breeder’s Rights Act 1994 (Cth). In both the U.S.A. and Australia, either type of protection may be used to protect sale of material harvested from a protected organism.

Interestingly, the Decision in this US case has broader application than just the field of biological sciences because self-replication occurs in other arts, such as the electronic arts, in for example, code replication and in the Chemical arts in, for example, polymerization reactions. Additionally, future applications of nanotechnology may extend the technology into still further technical areas. In the final paragraph, the US Decision does note that it is limited to the specifics of this case and is not intended to address all these types of selfreplicating products. Despite this qualification, the Court’s rationale should be of benefit to future considerations of self-replicating technologies, regardless of the technical field, because a determination of whether or not the alleged infringing act has derived the benefit of the patented invention will be pertinent to a finding of infringement or otherwise.