Seeds are not exhausted

In a unanimous decision, the United States Supreme Court affirmed the lower court decision in Bowman v. Monsanto et al. The Court held that a farmer who buys patented genetically modified seeds may not reproduce them through planting and harvesting without the patent holder’s permission.

The decision, Bowman v. Monsanto Co. et al. (PDF), written by Justice Kagan, addressed the concept of patent exhaustion, which provides a right to use or resell an article by authorized sale but does not allow the purchaser to make new copies of the patented invention. (See my previous post on the history of the case.)

The patents at issue, (US5,352,605 and RE39,247) related to Monsanto’s Roundup Ready soybeans. The defendant, Bowman, purchased soybeans from a grain elevator, purchased “commodity soybeans” intended for consumption and planted them in his fields. Since most of the soybeans contained the patented genes, he was able to use glyphosate-based herbicide to control weeds.

The Court concluded that:

Under the patent exhaustion doctrine,Bowman could resell the patented soybeans he purchased from the grain elevator; so too he could consume the beanshimself or feed them to his animals. Monsanto, althoughthe patent holder, would have no business interfering inthose uses of Roundup Ready beans. But the exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied). And that is precisely what Bowman did. [p5]

The Court rejected Bowman’s argument that the purpose of the patented seeds is for them to be planted in the normal way, as he has done.

Reproducing a patented article no doubt “uses” it after a fashion.But as already explained, we have always drawn the boundaries of the exhaustion doctrine to exclude that activity, so that the patentee retains an undiminished right to prohibit others from making the thing his patent protects. [p8]

The Court also rejected Bowman’s “blame-the-bean” defence:

Still, Bowman has another seeds-are-special argument: that soybeans naturally “self-replicate or ‘sprout’ unless stored in a controlled manner,” and thus “it was the planted soybean, not Bowman” himself, that made replicas of Monsanto’s patented invention. Brief for Petitioner 42; see Tr. of Oral Arg. 14 (“[F]armers, when they plant seeds, they don’t exercise any control . . . over their crop” or “over the creative process”). But we think that blame-the-bean defense tough to credit. Bowman was not a passive observer of his soybeans’ multiplication; or put another way,the seeds he purchased (miraculous though they might be in other respects) did not spontaneously create eight successive soybean crops. [p9]

The Court cautions that the law may apply differently to future self-replicating inventions:

Our holding today is limited—addressing the situation before us, rather than every one involving a self replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose.

Monsanto’s soybean litigation has previously gone to the Supreme Court of Canada in Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 which also related in some ways to the “use” of the patented invention.