On May 13, 2013, a unanimous U.S. Supreme Court held in Bowman v. Monsanto Co. that the patent exhaustion doctrine does not give a farmer who purchases beans containing Monsanto’s patented genetic traits the right to replicate the patented genes by planting and harvesting a crop containing the patented traits. Some background and highlights from this important opinion follow.
Monsanto’s patented soybean seeds have been genetically modified (GM) to survive exposure to glyphosate, the active ingredient in many herbicides, so weeds can be sprayed after a planted crop emerges without killing the crop. Monsanto sells the GM soybean seeds under a limited license that permits a grower to plant the purchased seeds in one, and only one, season. The grower may consume the resulting soybeans or sell them as a commodity, but may not save any of them for replanting. These license restrictions prevent farmers from creating their own copies of Monsanto’s patented GM seeds without paying Monsanto, since the patented genetic trait is passed on from the planted seeds to the harvested soybeans.
Bowman purchased commodity soybeans — anticipating that most were grown from seeds containing Monsanto’s patented herbicide resistant genes – from a local grain elevator that sold beans for human or animal consumption, not as seeds. Instead of using these beans for consumption or feed, however, Bowman planted them. By applying herbicide after the beans germinated, he eliminated the non-GM beans and grew a crop of GM beans. From this first crop, Bowman replicated Monsanto’s patented beans for eight seasons by saving some of each crop for replanting in the next growing season, thereby using and replicating Monsanto’s patented technology without re-purchasing GM seeds from Monsanto.
When Monsanto sued Bowman for patent infringement, Bowman argued unsuccessfully in the federal district court and on appeal to the Federal Circuit that Monsanto’s effort to restrict his use of beans lawfully sold by local farmers to the grain elevator that supplied Bowman’s beans violated the doctrine of patent exhaustion. Affirming the Federal Circuit, the Supreme Court held that, although the patent exhaustion doctrine requires that “the initial authorized sale of a patented article terminates all patent rights to that item,” Bowman was not protected by the doctrine because, by planting and harvesting the beans and replicating Monsanto’s patented technology in the harvested beans, he had gone beyond use of the purchased beans to “mak[ing] additional patented soybeans without Monsanto’s permission . . . .” Bowman v. Monsanto, slip. op., at 4, 5. It is settled that the patent exhaustion doctrine “leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item,” the Court stated. Bowman v. Monsanto, slip. op., at 4-5. “Because Bowman thus reproduced Monsanto’s patented invention, the exhaustion doctrine does not protect him.” Id., at 6.