Article by Cynthia Tape, Melanie Rowand, and Sorel Bosan
Published in Chair's Bulletin: ABA Section of Intellectual Property
Law, January 2005.
Schmeiser v. Monsanto is the Supreme Court of Canada’s most recent decision involving higher life forms. In this case, Monsanto alleged that Schmeiser, a farmer, had infringed its patent rights by reproducing canola seeds and plants that contained genes and cells covered by Monsanto’s patent claims, and by selling the harvested canola seeds. The patent in question claimed genetically engineered genes, and cells containing those genes, that confer herbicide resistance on canola plants. The patent did not claim the canola plants or seeds themselves. Schmeiser countered that in light of the SCC’s reasoning in Harvard College v. Canada (Commissioner of Patents) (Harvard Mouse) the modified gene and cell claims of Monsanto’s patent were invalid. In Harvard Mouse, the SCC had ruled that higher life forms (including plants and animals) were unpatentable.
In a split decision, the majority held that the question whether patent protection for genes and cells extends to activities involving the whole plant is irrelevant to a validity analysis; it is relevant only to infringement. It follows that gene and cell claims can confer enforcement rights over whole plants despite the unpatentability of the plants themselves. A second key ruling concerned whether possession can amount to infringing use of an invention. The majority held that possession, at least in a commercial context, raises a rebuttable presumption of use. Schmeiser had failed to provide sufficient evidence to rebut the presumption in this case. However, the majority also held that Monsanto was entitled to nothing on its claim for an accounting of profits since there was no evidence that Schmeiser had earned any profit from Monsanto’s invention.
Subsequent to this case, the Patent Office changed its position on the patentability of claims directed to plant or animal cells. Previously, the Patent Office required claims to plant or animal cells to be restricted to isolated cells, cell lines or cells in culture. The Patent Office is now permitting claims to cells if the description does not define "cells" to include plants, animals or tissue. In another practice update, the Patent Office now takes the position that post-filing data (experimental data generated after the effective filing date) cannot be used to demonstrate the utility of an invention or the soundness of a prediction.
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