Monsanto sought to prove their European patent No 0546090 protected soy meal, a commercial product which was being imported into Europe by the ship's load. Both the English High Court and the Grand Chamber of the Court of Justice decided, albeit by different routes, that the patent did not cover the soy meal.
When drafting patents, it is self evident that the protection to be sought by way of the patent needs to be relevant to the commercial activities of the client. Unfortunately, this simple concept is often overlooked, and on these grounds, the Monsanto patent can be said to have failed.
The patent described and claimed a class of EPSPS enzymes which are not sensitive to the herbicide glyphosate, known as Round Up. Plants containing such enzymes survive the use of glyphosate, whilst weeds are destroyed. Monsanto has inserted genes encoding the enzymes into the DNA of a soy plant it has called Round Up Ready soybean plant.
In October 2007 (Monsanto v Cargill: Pumfrey J: 10th October 2007: [2007] EWHC 2257 (Pat)) the English High Court found that a cargo of soy meal did not infringe the European patent. It was found, as a fact, that there was present in the soy meal aboard the MV Podhale some genomic DNA which included the Round Up Ready gene. However, the product claims in the patent referred to an isolated DNA sequence encoding a Class II EPSPS enzyme, and the judge concluded that claims requiring an isolated sequence could not be infringed by the soy meal as the language required that the gene be separated from other molecular species. These claims were "not talking about the DNA of the progeny of a plant or plants transformed using a plasmid incorporating DNA having that sequence".
Monsanto sought injunctions in the Netherlands under the same European patent (NL) against a number of traders seeking to import cargoes of soy meal through the port of Amsterdam, (Monsanto v Cefetra et al: Case C-428/08: 6th July 2010).
The court in the Netherlands considered that Monsanto had established the presence, in one of the disputed cargoes, of the DNA sequence protected by the
European patent. However, it was not sure whether that presence alone was
sufficient to constitute infringement of the European patent when the soy meal is marketed in the Community. It therefore referred questions to the Court of Justice (formerly the European Court of Justice) for a preliminary ruling.
The first question referred by the Dutch court was whether Article 9 of Directive 98/44/EC on the legal protection of biotechnological inventions is to be interpreted as conferring patent right protection when the patented product contained in the soy meal does not perform the function for which it was patented. The Court of Justice decided that the Directive did not confer patent right protection in these circumstances where the patented product is contained in the soy meal, but does not perform the function for which it was patented, but did perform that function previously in the soy plant, of which the meal is a processed product.
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