November 16, 2004
Source:
Patently Obvious,
IL - Patent Law Blog
edited by Dennis Crouch, Patent Attorney at
McDonnell Boehnen Hulbert &
Berghoff LLP
via Checkbiotech.org
McFarling v. Monsanto (Supreme Court Docket No. 04-31).
Homan McFarling was sued by
Monsanto for saving seeds and replanting them. The seeds had
been genetically modified by Monsanto to resist Roundup (R)
herbicide and were patented. (U.S. Patents
5,633,435 and
5,352,605).
At the Federal Circuit, McFarling argued that the Sales
Agreement from Monsanto involved an unlawful misuse of
Monsanto’s patents by restricting use of “god-made”
second-generation seeds. The Appellate Court disagreed. Because
the first-generation seeds (sold by Monsanto) were nearly
identical copies to the second-generation seeds, the Court found
that the patent scope includes both generations. Thus, the Court
rejected McFarling's appeal and held that the Sales Agreement
did not impermissibly extend Monsanto's rights.
Now, McFarling has taken the suit to the Supreme Court. In case
No. 04-31, McFarling is asking the Court to to overturn the
Federal Circuit's ruling and presents two questions:
1. May a patent holder lawfully prohibit farmers from saving and
replanting seed as a condition of the purchase of patented
technology?
2. Does obtaining patents on products which are the subject of
licensing agreements afford an absolute defense to any claim
that the licensing agreements violate the Sherman Act?
The Supreme Court has asked the Solicitor General to brief in
this case expressing the views of the United States. It is
expected that the Bush Administration, through the Solicitor
General, will support Monsanto's position. |