The Exhaustion Doctrine and Genetic Use Restriction Technologies: A Look at Bowman v Monsanto

• DOI: http://doi.org/10.1002/jwip.12025
• Published date: 01 November 2014
• Date: 01 November 2014
• Author: Jessica C. Lai

The Exhaustion Doctrine and

Genetic Use Restriction Technologies:

A Look at Bowman v Monsanto

Jessica C. Lai

University of Lucerne, Switzerland

The relationship between intellectual property rights and technologies used to protect such rights has been gaining

more and more attention in recent years. This has mostly been in the f‌ield of copyright and digital rights management

technologies (DRMs). However, challenges raised by certain biotechnologies and their inherent reproductive nature

have caused patent and plant variety right (PVR) owners to similarly create genetic use restriction technologies

(GURTs) to protect their rights. Arguments analogous to those raised in the copyright arena have been made that

GURTs exceed the rights of patentees and PVR owners, and prevent permitted uses from being undertaken. This

article discusses these arguments in light of recent case law on the exhaustion doctrine, exactly what it is that GURTs

do and the permitted uses in patent and PVR law. It concludes that the US Supreme Court decision Monsanto v

Bowman, along with the nature of GURTs, the patent specif‌ication and the limited exceptions to patent infringement,

mean that GURTs actually f‌it well with patent law and policy. However, the same cannot be said about GURTs used to

protect PVRs, due to the different standards for registration and more extensive exceptions to infringement.

Keywords patent law; exhaustion; biotechnology; GURTs

Introduction

Since the mid-1990s, Monsanto has been under f‌ire for its “terminator seeds,” or its genetic use restriction

technology (GURT) that involves the genetic engineering of seeds so that they will produce a crop once

planted, but then create only sterile seeds.

1

More specif‌ically, Monsanto’s technology was a variety-level

GURT, or V-GURT. Other types of GURTs allow the production of viable seeds, but none of the seeds will

express a specif‌ic trait (e.g. high vitamin C content), unless the plant is exposed to a certain proprietary

chemical or activator compound, which has to be purchased from the seed company. These are trait-

specif‌ic GURTS, or T-GURTs. The uproar against Monsanto was in most part from developing countries

and civil groups concerned by the fact that GURTs remove the ability of farmers to collect seeds from

their crops, forcing them to buy new seeds every year (Barczewski and Zajadlo, 2011, pp. 190–91;

Dutf‌ield, 2003, pp. 493–4; Oczek, 2000, p. 629; Verzola, 2005). Concerns over food security were also

raised (Burk, 2004, pp. 1569–71; Dutf‌ield, 2003, p. 494; Kariyawasam, 2009, p. 42).

It is important, however, not to forget that there is a valid reason why GURTs were invented. Namely,

to protect seeds that are patented or contain patented subject matter, such as certain genetic sequences (or

genes), or methods for genetically engineering for a specif‌ic trait. Patents give their owners the exclusive

right to make, use, offer to sell, sell and import the invention.

2

For example, Monsanto holds a patent for

genetically engineered seeds (such as for soybean plants), which are herbicide resistant.

3

Specif‌ically, they

are able to survive exposure to glyphosate, which is a common ingredient in herbicides, including

Monsanto’s well-known Roundup. The invention of such seeds is expensive (Kariyawasam, 2009,

pp. 40–1; Oczek, 2000, pp. 635, 644). Yet, once purchased, their reproduction is simple and of a

proliferating nature. GURTs allow patentees to enjoy their monopoly for the whole patent term

(Pottage, 2011, p. 108). Similar logic can be applied to plant variety rights (PVRs) (Kariyawasam, 2009,

p. 38), also known as plant breeders’ rights (PBRs), which endow their owners with the exclus ive right to

©2014 John Wiley & Sons Ltd 129

The Journal of World Intellectual Property (2014) Vol. 17, no. 5–6, pp. 129–141

doi: 10.1002/jwip.12025