Bowman v. Monsanto: Supreme Court Confirms That Soybeans Do Not Grow Themselves, Affirms Seed Biotech Patent Rights

In a unanimous decision, the U.S. Supreme Court held that a patent holder’s rights in biotech seeds extend to subsequent generations of crops grown by farmers.  Widely viewed as a victory for biotech seed producers and American farmers, the Court’s decision in Bowman v. Monsanto Co. should provide seed trait developers with the confidence that they will be able to protect their substantial research and development investments in seed biotechnology.

The case revolved around an Indiana farmer’s scheme to avoid paying Monsanto a technology fee for his use of its patented technology.  For almost a decade, Mr. Bowman purchased commodity soybeans from a local grain elevator, planted these beans, and sprayed the resulting crop with Roundup, Monsanto’s patented herbicide (glyphosate).  This unorthodox practice resulted in a crop that contained the patented Roundup Ready gene, which he replanted in subsequent seasons.  Each year, Bowman would spray his fields with Roundup, thereby utilizing Monsanto’s patented Roundup Ready technology without paying a license fee.

The Bowman case presented a novel issue to the Court – self-replication.  The Bowman case revolved largely around “patent exhaustion,” a somewhat obscure intellectual property law concept also known as the “first sale doctrine.”  In a nutshell, the doctrine holds that when a patent holder completes an authorized sale of a patented article, the patent holder ceases to have rights in that article.  Stated differently, the patent holder’s rights in that article are deemed exhausted.  For example, when one purchases a iPhone, Apple no longer maintains the right to control its use, sale, destruction or virtually anything else one does with that device, despite holding a multitude of patents.  However, even after a patent holder’s rights are exhausted, the buyer is prohibited from making or reproducing the patented item without the patent holder’s permission.

Before the Supreme Court, Bowman argued that Monsanto’s patent rights in its Roundup Ready seed were exhausted when Monsanto (or a licensed dealer) sold it to a farmer.  Bowman asserted that the patent could not be enforced on subsequent generations of soybeans reproduced from patented seeds, arguing that soybeans naturally self-replicated and that the beans themselves – not the farmer -- were responsible for copying the patented genetic material.

In a rather succinct and straightforward opinion penned by Justice Kagan, the Supreme Court rejected Bowman’s arguments.  The Court reasoned that planting and harvesting a patented self-replicating crop, such as soybeans, essentially amounted to reproducing a patented seed.  Following this logic, the Court concluded that Monsanto and other seed patent holders have a right to control the reproduction of their patented seed, holding Bowman infringed on Monsanto’s patents after he planted and harvested subsequent generations of soybeans grown from the patented seeds he purchased from the grain elevator.  Furthermore, the Court soundly rejected Mr. Bowman’s “blame-the-bean” defense, noting that he “was not a passive observer of his soybeans’ multiplication” and that the “seeds he purchased … did not spontaneously create eight successive soybean crops.”

OFW Law attorneys Gary Baise, Stewart Fried, and John Dillard drafted an amicus brief on behalf of the American Soybean Association, National Corn Growers Association, National Association of Wheat Growers and other agricultural trade associations in support of Monsanto’s arguments.  The brief explained the importance of biotechnology to agriculture, the societal benefits resulting from the use of biotechnical innovations and the need for patent protection in order to preserve a legal environmental which will foster future agricultural developments.

The Supreme Court’s decision in Bowman v. Monsanto, while short in length, is expected to have broad implications for future agricultural innovations.  Additionally, while the Supreme Court took care to note the limited scope of its ruling, it will likely be cited as persuasive authority in cases involving stem cells, gene therapies, software and other self-replicating technologies.

A copy of the Supreme Court’s opinion is attached here.

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