But, apparently, only Monsanto can make Roundup Ready® soybeans. In a decision that is good for patent holders but which stretches the meaning of “making” almost to the breaking point, the Supreme Court ruled that selecting seed that has certain properties is an act of patent infringement. Essentially the Court added a layer of intent (to infringe) over the normal actions of a farmer in growing a crop and retaining a portion of that crop as seed for the next year.
The basics of the case are straightforward. Farmer Bowman purchased soybeans of unknown “parentage” from the local grain elevator. Although those soybeans were meant for consumption, Bowman instead planted them, treated his fields with Roundup weed and grass killer, and harvested the beans from the plants that survived. These harvested beans were then planted again in the spring, and the cycle repeated until Bowman had enough Roundup resistance plants to make a crop.
Had Bowman purchased the Roundup Ready® seed soybeans from Monsanto he would have been required to sign an agreement that he would not retain any of his crop as seed for the next year, but having “found” seeds that were Roundup resistant Bowman argued that he was under no constraint. Needless to say, Monsanto felt differently.
Bowman’s main argument was “patent exhaustion“, the doctrine that says a patentee’s rights to control the sale and use of his invention ends after the first sale. Thus, Monsanto could control by license the terms under which farmers could buy the seeds (including prohibiting them from retaining seed for planting next year) BUT it could not control his use of the soybeans he purchased legally from the original purchasing farmer. Bowman argued that part of the normal use of a soybean is to grow new soybeans and that the sale and use of those new soybeans was outside of the patentee’s control, except through a separate license agreement (which he was not required to sign).
The Supreme Court’s ruling seems based on two principles. First, that growing a soybean plant and harvesting the crop should be considered “making” a soybean, in this case a patented soybean, in the context of the patent law. And secondly the Court seemed to suggest that Bowman was infringing the patent because he intended to end up with a Roundup resistant crop. While I will grant that the latter is probably true I find it hard to find someone guilty of patent infringement based on perceived intent.
As to the former principle, as Joyce Kilmer wrote, only God can make a tree. It seems to me that, intent aside, each of the steps that Bowman took falls within the normal farming operation – buying seed of unknown source, planting and nurturing the crop, fertilizing and applying weeding control, and saving some or all of the crop for next year’s seed. There were no extraordinary steps, no genetic testing for Roundup Ready DNA. In fact, I do not know whether Bowman ever knew he actually had the Roundup Ready soybeans; perhaps he had just luckily stumbled upon a natural genetic mutation that conferred Roundup resistance.
McDermott Will & Emery report in their IP Update, Vol. 16, No. 5, that the Court explicitly indicated that their ruling should not be applied broadly to other self-replicating inventions, particularly where the alleged infringer has less involvement in the reproduction of successive generations of the item. Nevertheless, I see trouble brewing. Biofuel producing microbes must replicate to do their job. What happens when some escape “into the wild” and are collected to make unlicensed biofuel?