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Danie Roy

No, we aren’t talking about tribbles today. Today, we’re going to discuss soybeans. Okay, before I lose all the carnivores reading this, we’re actually talking about plants in general; the particular case we’re discussing (Bowman v Monsato) just happens to be about soybeans.

Tribbles are cuter than soybeans.

Before we start, let’s cover some plant patent basics. The USPTO website says that:

A plant patent is granted by the Government to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor’s right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:

• A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be “made” or “manufactured.”
• Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
• Algae and macro fungi are regarded as plants, but bacteria are not.

Now, for backstory: Monsato bioengineered a soybean plant that would be resistant to Monsato’s herbicide, Round Up. This soybean, colloquially described as “Round Up Ready,” was patented and sold to farmers, accompanied by a contract requiring farmers no not re-plant future generations of beans. The farmers could, however, sell those beans as food.

Bowman figured out that, if he bought the food beans and planted them, a funny thing happened: the beans produced the patented plants. He then saved the seeds from those harvests and continued planting. How, you ask? Surely they were mixed in with regular soybeans, you ask? Well, they were – but the Round Up Ready beans had become so popular that, in any given handful, a vast majority would be descendants of the patented plant. In fact, the beans are so popular that it’s difficult to buy any beans that AREN’T Round Up Ready. Even if regular beans were mixed in, those could be killed off by applying… Round Up.

Monsato figured out what was going on, and accused Bowman of, loosely defined, manufacturing plants that infringed on its patent. Bowman countered, claiming that he was not bound by a contract through Monsato, and the exhaustion doctrine should apply in this case.

The exhaustion doctrine in patent law is a bit like the first sale doctrine in copyrights: first unrestricted sale of an item exhausts the patentee’s rights to control over that item. In other words, by buying the beans from the food market (sale) without a contract from Monsato (unrestricted), Bowman believed he had a right to do with the beans as he pleased, including replanting indefinitely.

The Federal Circuit sided with Monsato, finding that Bowman infringed. The Supreme Court is requesting that the US Solicitor General weigh in before deciding whether to grant certiorari. This is a bit of a difficult situation, so getting a lot of opinions is, after all, a good idea.

On one extreme, advocated by Monsato, plants and other self-replicating patented technology should be exempt from the exhaustion doctrine. In this scenario, however, some poor kindergartener’s science project is going to be infringing.

On the other extreme, advocated by Bowman, Monsato might be entitled to all of ONE sale of ONE seed and theoretically no longer be in control of its invention at all. I think we can all agree that that’s not horribly fair to Monsato, either.

The problem with self-replicating technology is that it is self-replicating. You only need one to have as many as you want, and there’s really no way to lay down  a hard rule without someone feeling slighted, and not without good reason. We’ll just have to wait and see if SCOTUS picks this one up.