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.
In an unanimous decision in Bowman v. Monsanto, argued February 19, 2013 and decided May 13, 2013, the U.S. Supreme Court explicitly confirms that the exhaustion doctrine does not extend to progeny of so-called self-replicating technologies.
We provided a summary of the oral argument here in the blog, and a longer look at the case in a recent issue of the Journal for Commercial Biotechnology, here, anticipating that the primary point of interest in the case for the U.S. Supreme Court was the opportunity to address the intersection of the exhaustion doctrine and self-replicating inventions.
The idea that the case was all about a new asserted exception from patent rights for digital and GM technologies was signaled by statements of the Justices at Oral Argument and so was not particularly insightful. Now this has been borne out by the Opinion of the U.S. Supreme Court, delivered this morning by Justin Kagan:
[T]he 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. He took the soybeans he purchased home; planted them in his fields at the time he thought best; applied glyphosate to kill weeds (as well as any soy plants lacking the Roundup Ready trait); and finally harvested more (many more) beans than he started with. That is how “to ‘make’ a new product,” to use Bowman’s words, when the original product is a seed. Brief for Petitioner 37; see Webster’s Third New International Dictionary 1363 (1961) (“make” means “cause to exist, occur, or appear,” or more specifically, “plant and raise (a crop)”). Because Bowman thus reproduced Monsanto’s pa tented invention, the exhaustion doctrine does not protect him. Were the matter otherwise, Monsanto’s patent would provide scant benefit.
In sum, Petitioner Vernon Hugh Bowman does not pass, go, collect $200 or otherwise avoid licensing fees by purchasing patented GM seeds outside of his ongoing Technology Agreement with the inventor and Respondent, Monsanto Company.
Just like death and taxes, Bowman has to pay for the advanced technologies and other agricultural inputs that he wants to use, including GM seeds that make his job easier, improve yields and contribute to the success of his farm. And as noted previously, both Monsanto and U.S. Government attorneys have stated that this case does not affect farmers who do not intentionally plant GM seeds without payment of royalties.
Susan K. Finston is President of Finston Consulting LLC, and, together with biotechnology pioneer Ananda Chakrabarty, is co-founder of Amrita Therapeutics Ltd., an emerging biopharmaceutical company based in India with cancer peptide drugs entering in vivoresearch. She is currently preparing to launch her first Crowd Funding campaign for Amrita Therapeutics first-ever therapeutic oncology medical device. For more information see AmritaTherapeutics.com or FinstonConsulting.com.