Monsanto wins patent exhaustion case at Supreme Court
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Monsanto wins patent exhaustion case at Supreme Court

In a short and unanimous opinion in Bowman v Monsanto, the US Supreme Court has upheld the Federal Circuit’s ruling that an Indiana farmer may not reproduce patented seeds without the patent holder’s permission

The dispute concerned Monsanto’s Roundup Ready genetically modified seed and is the latest case to address patent exhaustion in the United States.

Justice Kagan delivered the opinion, which was published on May 13. She said: “In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct.”

But she also said that the holding was “limited”: “We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose.”

The Court’s decision was expected following the oral hearing, and the submission of the US government.

Oral arguments were heard in February. Farmer Hugh Bowman was represented by Mark Walters of Frommer Lawrence & Haug, while Monsanto was represented by Seth Waxman of WilmerHale.

Amicus briefs were submitted by Knowledge Ecology International, the Automotive Aftermarket Industry Association, the American Antitrust Institute, Public Patent Foundation, and the Center for Food Safety and Save Our Seeds.

more from across site and ros bottom lb

More from across our site

High-earning businesses place most value on the depth of the external legal teams advising them, according to a survey of nearly 29,000 in-house counsel
Kilpatrick Townsend was recognised as Americas firm of the year, while patent powerhouse James Haley won a lifetime achievement award
Partners at Foley Hoag and Kilburn & Strode explore how US and UK courts have addressed questions of AI and inventorship
In-house lawyers have considerable influence over law firms’ actions, so they must use that power to push their external advisers to adopt sustainable practices
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Counsel say they’re advising clients to keep a close eye on confidentiality agreements after the FTC voted to ban non-competes
Data from Managing IP+’s Talent Tracker shows US firms making major swoops for IP teams, while South Korea has also been a buoyant market
The finalists for the 13th annual awards have been announced
Counsel reveal how a proposal to create separate briefings for discretionary denials at the USPTO could affect their PTAB strategies
The UK Supreme Court rejected the firm’s appeal against an earlier ruling because it did not raise an arguable point of law
Gift this article