In previous cases, Monsanto's patents concerned a GM crop in which the plant's DNA had been modified using genetic engineering to introduce a novel trait not naturally expressed in the species. While it has been established that the extraneous genes��introduced into the plants are patentable, plants��themselves are generally not. Recently, with the aid of technology, Monsanto has been breeding "" naturally with properties almost as wondrous as the GM crops. If these plants are not��patentable, what intellectual property rights protect the investment the breeder has made in developing new plant varieties?

Monsanto is best known for changing the way the world grows food. The company is the leading producer of genetically engineered seeds of commodity crops such��as corn and soybeans. By inserting new DNA into an organism’s genome, plants can be endowed with characteristics not��typically observed in nature. Of particular note are Monsanto's crops which are resistant to the herbicide glycophosphate. In order to protect the research and development required to produce such GM organisms, farmers planting GM crops are required to enter into a contract with Monsanto agreeing that they will not save and replant seeds produced from the GM seeds purchased from Monsanto. Monsanto's patents grant the company the exclusive rights��for the��use of��their invention thereby preventing third-parties who have not signed a contract from acquiring GM seeds and planting them.�� ����

However, Monsanto's latest line of produce have been developed the old fashioned way... sort of. produces 2-3 times the phytonutrients of normal varieties, the contains fewer tear-inducing chemicals, and tastes sweeter and has improved nutritional content. However, despite their unusual properties, none of these products have been genetically engineered. Using the technique of (MAS), researchers were able to identify genes that led to desirable traits and then bred plants with these characteristics. By scanning the DNA of the resultant seeds, the technique allows for the determination of whether a seed will grow into a plant having the desired property without having to wait. This greatly increases the speed at which plants with the desirable traits can be bred and the number and variety of traits that can be introduced. What may have taken countless generations to occur in nature, if it were to ever occur at all, can be accomplished in a matter of years using MAS.

However, as the plants have been bred "naturally" and have not been genetically engineered, they��are not patentable in the same way as GM crops could be.��In Pioneer Hi-Bred Ltd v Commissioner of Patents^[1],��Marceau J. held that the terms "manufacture" and "composition of matter" as�� used in the definition of "invention" in s. 2 of the "would be distorted if a unique but simple variety of soybean were to be included within their��scope"��and as such "the soybean variety developed by the appellant cannot be the subject-matter of a patent of invention."��A contract with a farmer may prevent that farmer from planting subsequent generations of seeds, but what is to stop a third-party from acquiring a seed and taking advantage of Monsanto's extensive investment in research?

Member countries of the World Trade Organization are required to provide a minimum standard of intellectual property protection as outlined in the (TRIPs). Article 27(3)(b) allows a member to exclude from patentability plants and biological processes for the production of plants. However, the same provision requires members to provide protection for plant varieties either through patents or a sui generis rights system. In addition, the (UPOV) requires members to provide an intellectual property right specifically for plant varieties. Collectively these rights are referred to as Plant Breeders Rights (PBR). In the United States the grants exclusive control over sexually reproduced plant varieties and the legal protection of PBR in Canada are set out by the and .


In order to qualify for protection under the Plant Breeders' Rights Act, a plant must be new, identifiable and distinguishable from other varieties (distinct), stable after repeated propagation and have homogenous features after sexual reproduction. These rights provide the holder the exclusive right to sell and propagate the plant variety in Canada for a period of up to eighteen years.����While Plant Breeders' Rights offer a method to protect the intellectual property of plant varieties in Canada, they��come with some exemptions. For example, of the Plant Breeder's Rights Act stipulates that a compulsory licence for the use of a plant variety can be granted to persons that��apply. Article��15(2) of the 1991 ��convention provides an (optional) exception to Breeder's rights where a farmer may��collect seeds of the protected plant variety from a harvest and use them to plant future crops.����


While indiviudal plant varieties may not be patentable, there is still some debate whether plants or plant material other than plant varieties are patentable. Plant Bioscience Ltd. was granted a patent for a "" but the MAS��method was later found to be an "" which is excluded from patentability.��Currently, the is deciding whether the of such processes are patentable.��Although I would argue that Monsanto's "supperveggies" are certainly innovative and represent a significant investment in research, its seems that for now they won't be afforded the same protection as their GM counterparts.

Corey McClary is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

^[1]��Pioneer Hi-Bred Ltd v Commissioner of Patents, [1987] 3 FC 8 at paras 9-11 (FCA).

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By most if not all - ()()(), the Court showed little sympathy for Bowman's position, appearing prepared to uphold in favour of Monsanto and patent rights-holders. While one could not contradict the Court on applying current law, there seemed to be an unacknowledged tension running through the hearing, between applying the law as it is and questioning what it ought to be in the face of unprecedented situations in patent law and related intellectual property issues.

I. Prologue: “Two parties, unalike in privity...”

Enter the facts. Monsanto sells certain types of soybean (and other) seeds with a patented gene that makes them resistant to Roundup, a Monsanto herbicide. Farmers who buy seeds from Monsanto must sign a contract binding them to using the seeds only once; they cannot plant seeds descended from the bought seeds. However, Monsanto allows farmers to sell, under no special conditions, descendant seeds to grain elevator mixtures. Bowman bought and planted such a mixture and harvested seeds from the plants that survived Roundup spraying, which indicated they were resistant.

The central issue of the case is whether or not Bowman planting descendants of the original seeds he bought constitutes patent exhaustion. Does Monsanto's patent reside only in the first generation of seeds sold to farmers, or does it reside in all seeds with the Roundup-resistant gene, including those grown into existence after sale?

II. Submission for Monsanto: “Justice! the law! my dockets, and my patents!”

Monsanto argues that if withers with the first sale of seeds alone, then the patent would quickly cease to have effect as all buyers could easily grow their own seeds from saved ones every year, instead of having to buy more from Monsanto. This, Monsanto contends, would “devastate innovation in biotechnology”. According to Monsanto, patent exhaustion does not include a right for the buyer to make unlimited copies of the sold item. Intervenors such as the added that patent exhaustion does not apply at all, as the new seeds are “new articles of manufacture”.

At the hearing, the justices raised challenges such as whether a Monsanto-favouring decision would have “the capacity to make infringers out of everybody”, due to the fact that Monsanto holds a near-total monopoly over soybean seeds, and due to events such as patented seeds into the fields of other farmers. The latter issue is particularly in light of .

III. Submission for Bowman: “Fare you well; your suit is cold.”

According to Bowman, Monsanto's first sale of the seeds exhausts the patent, and that's all there is to it; the buyer may do anything they like with the item after that. In perhaps a patent version of the thin-skull rule (obvious foreseeability notwithstanding), Bowman's argument implies that it's simply unfortunate Monsanto's patent happens to reside in something that is self-replicating and thus patent-undermining ; that is the liability one assumes with living organisms. Both Bowman and Monsanto claim that the other is asking the Court to carve out an exception in their favour.

Counsel for Bowman received a , with the justices actively putting him on the defensive regarding issues such as: the potential destruction of Monsanto's and similar patents flowing from a decision for Bowman; the inadequacy of contracts to replace patent protection; farmers' rights (or lack thereof) to exploit the self-replicating nature of seeds to go around Monsanto's patent; how frequent a practice it is for farmers to use grain elevator seeds for crops (and thus how severely an adverse decision would impact them); and whether or not counsel was mischaracterizing Monsanto's claim.

IV. Epilogue: “The course of true law never did run smooth.”

As mentioned, this case has the potential to set off trajectories in IP law far beyond what farmers may do with soybean seeds, and perhaps calls for more than straightforward application of existing law. First, the tellingly acted as intervenor for Monsanto, fearing a decision for Bowman could set a precedent applicable to and copyright. Multiple parties strengthened this nexus by citing ��(about making disk copies in a jurisdiction abroad),��and some have extended this connection to include cell lines and DNA used in medical research, not to mention .

Second, Monsanto argued that “size has never been thought to affect the contour of patent rights”. With anti-competition concerns such as and , however, the Court might consider whether size should, in fact, matter. Urgency arises in view of the fact that 93 percent of American-farmed soybeans (along with nearly 90 percent of both cotton and corn) were genetically engineered in 2010, according to a by , intervenor for Bowman.

Third, the justices consistently challenged Bowman on the idea that biotechnology patents should be exhausted on first sale in the case of ��. Justice Ginsburg asked, “Where is that in the law?” The problem here is that with the biotechnology in question, self-replication is the biology, not the technology; Monsanto did not invent photosynthesis. Current patent law as the Court seems poised to interpret it, however, treats the seeds and buyers as if Monsanto did.

Justice Ginsburg is correct in that Bowman's position is not in the law—and perhaps it . We can only hope that after having ��the various high stakes involved, the Court will hand down a decision that more fully speaks to the of whether or not, and how, it ought to be.

Cynthia Khoo is a JD Candidate at the University of Victoria.

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