Patent Controls on GM Crop Farming

Santa Clara Journal of International Law Volume 4 | Issue 1 Article 1 1-1-2006 Patent Controls on GM Crop Farming Janice M. Mueller Follow this and additional works at: http://digitalcommons.law.scu.edu/scujil Recommended Citation Janice M. Mueller, Patent Controls on GM Crop Farming, 4 Santa Clara J. Int'l L. 1 (2006). Available at: http://digitalcommons.law.scu.edu/scujil/vol4/iss1/1 This Article is brought to you for free and open access by the Journals at Santa Clara Law Digital Commons. It has been accepted for inclusion in Santa Clara Journal of International Law by an authorized administrator of Santa Clara Law Digital Commons. For more information, please contact . Vol. 4 [2006] SANTA CLARA JOURNAL OF INTERNATIONAL LAW www.scu.edu/scjil 1 PATENT CONTROLS ON GM CROP FARMING Janice M. Mueller1 I. INTRODUCTION Patents on genetically modified (GM) crop technology arm their owners with powerful control over farmers’ ability to grow, harvest, distribute, and profit from GM crops. No clearer example exists than the April 2004 decision of the U.S. Court of Appeals for the Federal Circuit in Monsanto Co. v. McFarling (McFarling II),2 in which the court upheld Monsanto’s patent licensing practice of forbidding farmers to save seed from GM crops for replanting. McFarling II thus confirms the illegality of a custom engaged in by farmers for centuries.3 The Federal Circuit’s 1 Professor of Law, University of Pittsburgh School of Law. E-mail: . I am grateful to the participants in “The Future of Food–Legal and Ethical Challenges” conference held at Santa Clara University on April 15, 2005 for their helpful comments on an earlier version of this article. 2 See Monsanto Co. v. McFarling, 363 F.3d 1336 (Fed. Cir. 2004), cert. denied, 125 S. Ct. 2956 (2005) [hereinafter McFarling II] (opinion authored by Circuit Judge Clevenger for a panel also including Circuit Judge Lourie and Senior Circuit Judge Plager). An earlier Federal Circuit decision in the same matter upheld a district court’s preliminary injunction of McFarling. See Monsanto Co. v. McFarling, 302 F.3d 1291 (Fed. Cir. 2002) [hereinafter McFarling I]. 3 The saving and replanting of seed is a custom of ancient lineage. See Jeremy P. Oczek, In the Aftermath of the "Terminator" Technology Controversy: Intellectual Property Protections for Genetically Engineered Seeds and the Right to Save and Replant Seed, 41 B.C. L. REV. 627, 647 (2000) (noting that “[e]ver since humans began the transition from nomadic herders to farmers, saving seed for planting the following year's crop has been a basic tenet in the practice of agriculture.”) (citing Laurent Belsie, Plants Without Seeds Challenge Historic Farming Practices, CHRISTIAN SCI. MONITOR, July 30, 1998, at B4). This custom is reflected in the exemption for seed-saving included in the U.S. Plant Variety Protection Act (PVPA) of 1970. See 7 U.S.C. § 2543 (2005) (providing in part that “[e]xcept to the extent that such action may constitute an infringement under subsections (3) and (4) of section 111 [7 U.S.C.S. § 2541(3) and (4)], it shall not infringe any right hereunder for a person to save seed produced by the person from seed obtained, or descended from seed obtained, by authority of the owner of the variety for seeding purposes and use such saved seed in the production of a crop for use on the farm of the person, or for sale as provided in this section.”). Vol. 4 [2006] PATENT CONTROLS ON GM CROP FARMING Janice M. Mueller 2 conclusion that Monsanto’s restriction on planting saved seed does not violate the antitrust laws nor amount to patent misuse deserves further scrutiny, as demonstrated by the Supreme Court’s invitation to the Acting Solicitor General to file an amicus brief in McFarling II.4 This paper details the facts of McFarling II and critiques the Federal Circuit’s analysis of the unique patent and antitrust law issues raised thereby. II. Facts of Monsanto v. McFarling Homan McFarling, a Mississippi soybean farmer, obtained 1000 bags of Monsanto’s Roundup Ready® (RR) soybean seed from his local seed store.5 This seed is genetically modified so that the soybean plants The 1985 advent of U.S. utility patent protection for seeds and plants provided a stronger form of protection than the PVPA that was particularly useful for genetically engineered crops. See Ex parte Hibberd, 227 U.S.P.Q. 443 (Bd.Pat.App. & Int. 1985) (rejecting USPTO examiner’s position that plants and seeds protectable under the PVPA or the Plant Patent Act (PPA) of 1930 could not also qualify as subject matter eligible for utility patent protection under 35 U.S.C. § 101). In McFarling II, the Federal Circuit confirmed that U.S. utility patent protection of seeds is not subject to the seed-saving exemption found in the PVPA. See McFarling II, 363 F.3d at 1344 (concluding that in light of Supreme Court’s interpretation in J.E.M. AG Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (2001), of Congress’s intent in enacting the PVPA, “Congress did not intend to prohibit owners of utility patents from enforcing seed-saving prohibitions in their licenses”); see also Mark D. Janis, Supplemental Forms of Intellectual Property Protection for Plants, 6 MINN. J. L. SCI. & TECH. 305, 311 (2004). 4 McFarling filed a petition for certiorari in the Supreme Court on July 6, 2004. See Petition for Writ of Certiorari, McFarling v. Monsanto Co., No. 04-31, 2004 WL 1535852 (S. Ct. July 6, 2004). The Supreme Court thereafter invited the Acting Solicitor General to file a brief in the case expressing the views of the United States. McFarling v. Monsanto Co., 125 S. Ct. 348 (2004). The United States recommended denial of certiorari, primarily on the ground that the Federal Circuit’s decision “involve[d] a narrow application of established legal principles to a specific factual context involving a self-replicating product.” Brief for the U.S. as Amicus Curiae at 10, McFarling v. Monsanto Co., No. 04-31, 2005 WL 1277857 (S. Ct. May 27, 2005). The Supreme Court subsequently denied certiorari. McFarling v. Monsanto Co., 125 S. Ct. 2956 (2005). 5 The transaction is arranged such that instead of purchasing the seeds outright, the farmer merely obtains a license to use the seeds subject to certain restrictions on that use. Software manufacturers similarly use “shrink-wrap” licenses to convey software to users 2 Vol. 4 [2006] SANTA CLARA JOURNAL OF INTERNATIONAL LAW www.scu.edu/scjil 3 grown therefrom will be resistant to Monsanto’s Roundup® herbicide.6 Monsanto owns several patents directed to the gene modification technology7 and licenses the patents to approximately 200 seed manufacturers (denominated Monsanto’s “seed partners”), which insert the patented trait (glyphosate resistance) into unmodified soybeans. As a condition of obtaining the resulting GM seed, McFarling had to sign Monsanto’s Technology Agreement. In exchange for the “opportunity to purchase and plant seed containing” the R (...truncated)