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Questions over Schmeiser's Ruling
Percy Schmeiser's battle with the GM giant Monsanto came to an end with the recent
Supreme Court ruling, but what does it really mean? Lim Li Ching raises key questions
Schmeiser vs Monsanto
The Supreme Court of Canada has upheld
the lower courts' rulings that Percy
Schmeiser infringed Monsanto's patent on
the transgene that confers resistance to
glyphosate herbicides such as Roundup.
The judgement, by a narrow 5-4 margin in
favour, was given on 21 May 2004. It
marked the end of an uphill legal battle for
the Saskatchewan farmer.
In 1998, Monsanto brought Schmeiser
to court, alleging that he had planted and
reproduced canola seeds and plants containing
genes and cells claimed in its patent,
and had sold the harvest, without consent or
licence (see "Schmeiser's battle for the
seed", SiS 19). Schmeiser, a seed developer
and seed saver, argued in his defence
that he had merely planted his fields with
seed saved from the previous year, and that
his crops must have been contaminated by
Roundup transgenes.
The judge ruled in Monsanto's favour in
March 2001, finding that Schmeiser had in
1998, planted without licence, canola fields
with seed saved from the 1997 crop, which
"he knew, or ought to have known", was
Roundup tolerant. The crop, when tested,
did contain the gene and cells claimed in
Monsanto's patent. But, "the source of the
Roundup resistant canola… is really not significant
for the resolution of… infringement".
Thus, a farmer whose field contains seed or
plants originating from seed spilled or blown
into them, in swaths from a neighbour's land
or from germination by pollen carried by
insects, birds or wind, does not have the
right to use the patented gene, or the seed
or plant it is in, the judge said.
Schmeiser was ordered to pay
Monsanto its court costs and the profit from
his 1998 canola crop, amounting to approximately
Canadian $175,000. Schmeiser
appealed, but all three judges of the Federal
Court of Appeal ruled against him in May
2002.
Split decision
This latest appeal, brought to the highest
court in Canada, resulted in a split decision:
five to four. While the judges agreed that
higher life forms, including plants, cannot be
patented, the majority (by one) found
Schmeiser guilty of patent infringement, but
the minority held that patented genes should
not grant exclusive rights over the plant in
which it occurs.
The judges unanimously set aside the
crop profits that Schmeiser had been earlier
ordered to pay Monsanto. This was
because his profits were "precisely what
they would have been had [he] planted and
harvested ordinary canola". Nor did he gain
any advantage from the herbicide resistant
nature of the crop, as he didn't spray
Roundup to reduce weeds.
Furthermore, the judges concluded that
he should not pay Monsanto's legal bills, a
considerable sum accumulated over the
years. The 'loser' of a case is usually obliged
to absorb the legal costs of the 'winner'. In
this case, each party had to bear their own
costs.
These findings were a personal victory
for Schmeiser and his wife, who had spent
the last seven years and much of their own
resources to fight their case.
'Expansive' patent
Five of the nine judges said that Monsanto's
patent was valid irrespective of whether protection
for the gene and cells extends to
activities involving the plant. Although
Monsanto only claims protection for the
genes and cells, "a purposive construction
of the patent claims recognizes that the
invention will be practised in plants regenerated
from the patented cells…"
As the trial judge's findings that
Schmeiser saved, planted, harvested and
sold the crop containing the patented gene
and cells were uncontested (although the
original plants came onto his land without his
intervention), the issue was whether this
amounted to "use" of patented material.
According to the five judges who found
Schmeiser guilty of infringing Monsanto's
patent, the acts of saving and planting the
seed, then harvesting and selling plants
containing the patented cells and genes,
constituted "utilization" of the patented material.
Furthermore, by cultivating the canola
without license, Schmeiser was deemed to
have "deprived [Monsanto] of the full enjoyment
of the monopoly".
The five judges maintained that infringement
does not require use of the gene or cell
in isolation. They also said that Schmeiser
had failed to rebut the presumption of use,
as he had actively cultivated Roundup
Ready canola as part of his business operations.
They maintained that infringement
does not require the use of Roundup, to
account for the "stand-by" utility of the herbicide
tolerant trait (i.e. whether or not a farmer
sprays Roundup, cultivating Roundup
Ready canola means that the farmer may in
future spray and benefit).
The presence of one patented gene
thus in effect confers control over the entire
plant, something that Monsanto cannot
actually patent. In so accepting this "expansive"
conception of patents, the five judges
seem to contradict their own 2002 decision,
which saw the Supreme Court ruling that
higher life forms cannot be patented in
Canada (see "Canada rejects patents on
higher life forms", SiS 19). Now, 18 months
later, these judges ruled that higher life forms
containing a single patented gene are effectively
the property of the owner of the single
patented gene. These two diametrically
opposed positions are difficult to reconcile.
Dissenting view
In contrast, the four dissenting judges used
the Supreme Court decision that plants, as
higher life forms, are not patentable, to
argue that Monsanto's patent claims over
the transgene and cells, while valid, should
not "grant exclusive rights over the plant and
all of its offspring". In short, they argued that
Monsanto's valid claims should be solely for
genetically modified (GM) genes and cells in
the laboratory prior to regeneration, and for
the attendant process for making the GM
plant.
Moreover, the Canadian patent explicitly
limits protection to the transgene and the
cells containing it. By not including whole
plants, seeds or crops, the dissenting judges
said that Monsanto had specifically disclaimed
plants in their patent, i.e. "what is not
claimed is considered disclaimed". As such,
one could not reasonably expect patent protection
to be "extended to unpatentable
plants and their offspring".
In the opinion of the minority, the appropriate
test for determining "use" is whether
the patentee has been deprived of monopoly
over the use of the invention as construed
in the claims, rather than whether the
patentee was deprived of the commercial
benefits flowing from the invention. Applied
here, the question is whether Schmeiser
had used Monsanto's GM cells and genes
as they existed in the laboratory prior to differentiation
and propagation, or the GM
process. Their answer was "no".
The dissenting judges said that the
lower courts had erred not only in construing
the claims to extend to plants and seed, but
also in construing "use" to include the use of
the plant, which is explicitly disclaimed by
Monsanto. Accordingly, they argued that
cultivation of plants containing the patented
gene and cell does not constitute infringement,
neither do those plants have "standby"
utility. To conclude otherwise would, in
effect, confer patent protection on the plant.
SCIENCE IN SOCIETY 23, AUTUMN 2004