Distribution, Competition, and Antitrust / Intellectual Property (IP) Law

Fruit of the Patented Tree?

In criminal law, we have the doctrine of the “fruit of the poisonous tree” — if the government obtains evidence illegally, then any evidence it discovers as a result is also inadmissible.

In the patent world, we have patents on seeds, which are “self-replicating,” and the question whether the next generation seeds from the plants that grow from those seeds are within the scope of the patent.  The Federal Circuit has so far sided with patentees on this question, but the Supreme Court may be preparing to consider the issue, as reported in Patently-O.

Here’s the genesis of the problem: Monsanto bioengineered a soybean that is resistant to Monsanto’s herbicide Roundup.  The soybean is patented, and is “Roundup Ready.”  Monsanto licenses(*) farmers to plant the patented soybeans, and to sell the resulting crops as food, but does not license the farmers to replant the beans.

Some farmers apparently realized that they could buy food beans and replant them, and the resulting crops would also be Roundup Ready (more or less — I believe there are a few complications here, but we’ll skip them).  Such unlicensed use violates the patent, the Federal Circuit held, but now on a petition for certiorari the Supreme Court has asked the Solicitor General to weigh in.  That means there’s a higher chance (though by no means a certainty) that the Court will take up the issue.

Bowman is arguing that the doctrine of patent exhaustion / first sale lets him use replanted beans.  I covered the exhaustion issue recently here.  Monsanto, of course, is arguing that its patent extends to each new generation of plants.

It’s an interesting question.  The problem is that these plants, by their very nature, are self-replicating.  If Monsanto has a valid patent, it may reasonably extend beyond at least one replication — otherwise, only the first patented soybean ever produced would be protected.  On the other hand, if each and every generation of seeds is within the exhaustion doctrine, then the patent (at least before it expires) will never be exhausted.

(*) Or so I understand (the seeds are provided under Technology Agreements that specify what farmers can do with them).  If that’s right, it may make application of the exhaustion doctrine more difficult, because there is no first sale.  But perhaps there is an argument that Monsanto sells seeds.  However, if it sells seeds, it sells particular seeds — not the next generation seeds, which are just a gleam in their parents’ eyes.  That fact again makes it difficult for the first sale doctrine to attach to subsequent generations which have not been sold yet.  This latter sort of logic seems to have persuaded the Federal Circuit.

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