Bowman v. Monsanto: Intersection of the Exhaustion Doctrine and Effective Protection for Reinvented Articles
This is a guest post from Susan K Finston, President of Finston Consulting. Do you have a response to Susan’s post? Respond in the comments section below.
On February 19, 2013, the U.S. Supreme Court heard oral argument in Bowman v. Monsanto – a case that pits the emotional pull of seed-saving vs. the potential to undercut innovation if farmers may save/buy/sell GM seed.
Vernon Hugh Bowman is a farmer who entered into an ongoing technology agreement for access to genetically modified soybeans known as Roundup Ready® soybeans and also used the soybeans without permission for his 2nd season planting dating back to 1999. Both Monsanto and the U.S. Government have confirmed that this case does not affect any farmers who find GM seeds accidentally growing in their fields, which appears to be unlikely, at least in the case of soybeans.
While Bowman v. Monsanto has been framed as a ‘David and Goliath’ dispute between a lone-wolf farmer and a global biotech company, the Court cut to the chase with Chief Justice Roberts asking Petitioner’s counsel at the outset:
“Why in the world would anybody spend any money to try to improve the seed if as soon as they sold the first one anybody could grow more and have as many of those seeds as they want?”
Anti-GM activists had high hopes for the Bowman case, perhaps assuming that after losing at the District Court and Appellate levels, the U.S. Supreme Court granted certiorari to the Petitioner in order to take on broader issues of GM seed patentability. In the event, the Justices instead signaled strong interest in the intersection of the Exhaustion Doctrine and technologies like Roundup Ready® soybeans that reproduce perfectly across generations. As summed up by Justice Ginsburg:
[T]he Exhaustion Doctrine was shaped with the idea of an article; there was an article that you could use and then you use it and its used up. But we haven’t applied the Exhaustion Doctrine when you have a new — when you create a copy of the original. So it’s — it’s not that we have law in place. We’ve been dealing with an item with the Exhaustion Doctrine and now we have hundreds of items, thousands of items, all growing from that original seed.
The U.S. Government and counsel for Monsanto cited Microsoft v. AT&T (2007), noting commonalities between digital replication of software and biotechnologies that may reproduce desirable genetic traits through successive generations. In response to a question from Chief Justice Roberts, Bowman’s counsel pointed out that the Court had found in favor of Microsoft, finding no infringement of AT&T patents due to extraterritorially.
Now with passage of time, though, the Court’s majority may find more sympathy with Justice Steven’s dissent in Microsoft, concluding that the Golden master disk represents both the core software component and the “functional equivalent to a warehouse of components,” – perfect digital copies of the original to be reproduced ad infinitum and without payment of royalties to the patent holder.
Disclosure: Through through the non-profit NGO BayhDole25, I submitted amicus briefs to the U.S. Supreme Court in both Bowman v. Monsanto and Microsoft v. AT&T (2007) supporting the patent holder in both cases. The BayhDole25 brief in Bowman v. Monsanto may be downloaded here, the BayhDole25 brief in Microsoft v. AT&T (2007) may be downloaded here.
About the author:
President of Finston Consulting LLC since 2005, Susan works with innovative biotechnology and other clients ranging from start-up to Fortune-100, providing support for legal, transactional, policy and “doing business” issues. Susan has extensive background and special expertise relating to intellectual property and knowledge-economy issues in advanced developing countries including India and South Asia, Latin America and the Middle East North Africa (MENA) region. She also works with governments, s and NGOs on capacity building and related educational programs through BayhDole25. Together with biotechnology pioneer Ananda Chakrabarty, she also is co-founder of Amrita Therapeutics Ltd., an emerging biopharmaceutical company based in India with cancer peptide drugs entering in vivo research. Previous experience includes 11 years in the U.S Foreign Service with overseas tours in London, Tel Aviv, and Manila and at the Department of State in Washington DC. For more information on latest presentations and publications please visit finstonconsulting.com.
Intetesting, what is the effect of undeveloped gmo patent systems in Africa to fdi in seed industry? Any quick comments
My understanding is that the regulatory hurdles in Africa have been as much of a barrier for R&D as under-developed or undeveloped patent systems for GM technologies. I will give this some further thought and welcome other views.