Academic journal article The Journal of High Technology Law

Bowman V. Monsanto and Self-Replicating Seeds; David V. Goliath or Don Quixote V. Windmills?

Academic journal article The Journal of High Technology Law

Bowman V. Monsanto and Self-Replicating Seeds; David V. Goliath or Don Quixote V. Windmills?

Article excerpt

I. INTRODUCTION AND OBJECTIVES A. Distinct treatment of seeds and other planting material under U.S.    patent law B. Objectives  II. BOWMAN'S TRAVAILS WITH MONSANTO A. Monsanto technologies and licensing agreements B. Bowman's farming practices and alleged infringement C. District court decision D. Appeals court decision E. Appeal to the Supreme Court F. Question Presented  III: CASE LAW A. Infringement    a. Using, Making and Selling    b. Innocent Infringement B. Experimental use C. Repair v. reconstruction D. Patent exhaustion/implied license    a. Early Cases    b. Federal Circuit Cases    c. Supreme Court Cases    d. Implied License E. Economic arguments  IV. DISCUSSION A. Did the conditions for direct infringement exist? B. Was Bowman a contract or infringement issue? C. Does an authorized unconditional sale actually forfeit all subsequent    interest in the invention? Is Bowman guilty of experimental use    and 'reconstruction' infringement? D. Did Bowman illegally 'reconstruct' the RR soybean seeds? Were    the progeny seeds sold? E. Was Bowman's sale 'authorized'? F. Was the Bowman sale unconditioned? G. Are Univis and Quanta Computer appropriate precedent for Bowman? H. Should the courts consider the economic issues involved in seed saving?  V. SUPREME COURT DECISION  VI. CONCLUSIONS AND ISSUES FOR THE FUTURE 

Cite as 13 J. High Tech L. 508

I. Introduction and Objectives

On October 5, 2012, the Supreme Court in an unexpected decision granted certiorari to Bowman v. Monsanto. (1) Less surprisingly, on May 13, 2013 the Court decided unanimously to uphold the lower court decision finding Bowman to have infringed Monsanto's patents (details in Section V below).

The case applies to patent exhaustion in the planting of patented second-generation soybean seeds by an Indiana farmer. (2) The cert. decision was surprising in part because the case is very similar to two seed-saving decisions made by the Federal Circuit over the past decade which found the farmer defendants to be infringing. (3) In deed, at one level of analysis, those cases differed from Monsanto v. Bowman only in that Vernon Bowman planted not his own saved seeds, as was the case in both McFarling and Scruggs, but rather bought and planted "commodity seeds" grown by other farmers and sold to a dealer (known as a grain elevator) for use as food and feed. (4) Commodity seeds are drawn from the soybean crop sold to a dealer which have been cleaned of stones and dirt as well as damaged seeds so as to assure improved planting and germination. (5) One way of considering the case is the distinction between replanting one's own seeds compared to planting those grown by neighbors and purchased from an elevator. (6)

Another basis for surprise is the Solicitor General's recommendation against certiorari on the basis that the Federal Circuit's decision in Bowman was "correct and does not conflict with any decisions of this [Supreme] Court or any other court of appeals." (7) The Solicitor General further points out that the issues in the certiorari relate to the "conditional sale" doctrine, which was not the basis for the Bowman decision. (8) "This case is therefore an inappropriate vehicle to consider the continuing validity of the Federal Circuit's pre-Quanta case law." (9) What is clear is that seeds in particular have been treated differently under patent law since its onset in 1790. (10) An understanding of the how and why of that treatment is useful background for appreciating the context in which Bowman is being considered.

A. Distinct treatment of seeds and other planting material under U.S. patent law

Seeds and other planting materials (bulbs, cuttings, tubers, etc.) were not granted patent protection for the first 140 years of U.S. intellectual property law. (11) That led the great breeder Luther Burbank (12) to declare in frustration, "A man can patent a mousetrap or copyright a nasty song, but if he gives to the world a new fruit that will add millions to the value of the earth's annual harvests, he will be fortunate if he is rewarded by so much as having his name connected with the result. …

Search by... Author
Show... All Results Primary Sources Peer-reviewed

Oops!

An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.