Monsanto v. Bowman: Patents on GMO Seeds

By Nicholson Price

Monsanto has been receiving quite a bit of press recently.  Marchers in over 400 cities protested the company and the GMOs it makes took place a few days ago, arguing that foods should be labeled if they contain GMOs.

More broadly relevant to the biotech industry and GMOs generally, a few weeks ago, the Supreme Court released its 9-0 opinion in Bowman v. Monsanto, No. 11-796.  This case shores up the patent-law foundation for the GMO seed business (as was widely expected), but also takes an interesting turn involving intent and self-replicating technology in general.

Monsanto invented, makes, and sells Roundup-Ready soybeans.  These plants are resistant to Monsanto’s herbicide Roundup, so farmers can plant the seeds then spray with Roundup; weeds will be killed, but the soybeans will survive.  The seeds are patented, and when Monsanto sells them to farmers, it grants a license to plant and grow only one crop for sale; farmers are not permitted to save seeds for replanting or sell them to others for replanting.

Bowman, an Indiana farmer, thought up what he considered a way around this restriction.  For his late-season planting, he bought commodity soybeans from a grain elevator, planted them, and sprayed with Roundup.  Since many U.S. commodity soybeans are Roundup-Ready, some of them survived Roundup; Bowman grew and harvested those soybeans, and kept the seeds to use in replanting for another eight late-season crops.  When Monsanto found out and sued for patent infringement, Bowman argued that because the seeds had been sold once (by other farmers to the grain elevator), the “first-sale doctrine,” under which patent rights are extinguished by a valid first sale, made his use non-infringing.

The courts did not agree.  The district court found infringement, and the Federal Circuit affirmed.  The Supreme Court granted cert and affirmed 9-0.  The first-sale doctrine doesn’t permit the purchaser to make copies of the patented invention; otherwise, the patent monopoly wouldn’t last long.  The Court held that Bowman had “made” more Roundup-Ready soybeans:

He took the soybeans he purchased home; planted them in his fields at the time he thought best; applied glyphosate [Roundup] 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.

Accordingly, the first-sale doctrine didn’t apply, and Bowman was liable for infringement.  This holding lets the GMO seed business proceed as it has been, and closes what Bowman thought was a major loophole.

An interesting broader aspect of this case is how the Court narrowed its holding to these specific facts.  The Court emphasized how Bowman carefully controlled the soybeans’ growth (culling them with Roundup, harvesting, and saving seed for future seasons), and used this control to dismiss Bowman’s argument that soybeans naturally self-replicate (so that the beans are the ones doing the “making,” not the farmer).  In narrowing in this particular way, the Court appeared to rely on Bowman’s intent, a factor not normally considered in patent infringement analysis.  This emphasis is concededly fact-specific, and it’s hard to tell what aspects of Bowman’s actions are the necessary ones.  Would planting alone with intent to save and replant be enough, or is culling the first batch required?  What about planting and saving commodity seed without knowledge (or use) of its Roundup-Ready possibilities?

The Court explicitly left open the question of other self-replicating technologies, like bioengineered bacteria, viruses, and computer programs, which are proliferating and becoming more complex.  It will be interesting to see the extent to which the purchaser’s intent, and continued control, factor in the patent exhaustion analysis of those technologies.

W. Nicholson Price

W. Nicholson Price

Nicholson Price is an Assistant Professor of Law at the University of Michigan Law School. Previously, he taught law at the University of New Hampshire. He holds a PhD in Biological Sciences and a JD, both from Columbia, and an AB from Harvard. He clerked for Judge Carlos T. Bea on the Ninth Circuit, and was then appointed as an Academic Fellow at the Petrie-Flom Center for Health Law Policy, Biotechnology, and Bioethics at Harvard. Nicholson teaches patents and health law and studies life science innovation, including big data and artificial intelligence in medicine. He recommends reading Bujold, Jemisin, and Older. His work has appeared in Nature, Science, Nature Biotechnology, the Michigan Law Review, and elsewhere. Nicholson is cofounder of Regulation and Innovation in the Biosciences, co-chair of the Junior IP Scholars Association, and a Core Partner at the University of Copenhagen’s Center for Advanced Studies in Biomedical Innovation Law.

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