The future of farming after Bowman V. Monsanto.

• Author: Haugo, Josh

1. Introduction II. Background A. History of Roundup Ready B. Saving and Replanting Seed 1. Agronomic Practices 2. Breeding Methods 3. Reproduction Methods C. Judicial Consideration in Bowman v. Monsanto D. Judicial Consideration in Monsanto v. Schmeiser E. Commonalities Between Bowman and Schmeiser III. Analysis A. Intent to "Make or Use" B. Actions C. No Actual Use D. Public Policy IV. Recommendations A. Public Relations Benefit to Monsanto B. Legal Benefit to Monsanto C. Avenues for Change D. Best Practices for Farmers V. Conclusion I. INTRODUCTION

   The United States Supreme Court and Congress have failed to address the concerns of farmers who wish to save and replant first generation Roundup Ready seed after the patent expires. Due to Monsanto's patented second generation Roundup Ready 2 Yield trait with the same herbicide tolerance, farmers are unable to distinguish between the traits in their fields. The presence of the patented trait in a farmer's field would likely lead to a finding of patent infringement under the current law.

   Competing interests between the patent holder and the user have thus far favored the patent holder. (1) The changing landscape of products available in the market presents potential problems for farmers who wish to take advantage of technology that has passed into the public domain after the patents expire.

   This Note analyzes hypothetical cases of farmers who have their field contaminated through no act of their own and those farmers who may cause, or contribute to, the contamination of their field. The distinction may be important because greater protection should be offered to the farmer who does not know of, and does not cause, the patent infringement. This Note ultimately recommends that the law be changed, either by the Court or by Congress, to provide protection against patent infringement where the patented trait contaminates the farmer's field.

2. BACKGROUND

   The Court's recent Bowman v. Monsanto decision raises many questions as to the future of the law controlling patent infringement of self-replicating technologies. This Note addresses some potential pitfalls of the law as it stands. Most importantly, this Note examines potential patent infringement by farmers using Roundup Ready technology after the first generation glyphosate resistant trait loses patent protection in soybeans and other crops.

   1. History of Roundup Ready

      Monsanto released the first commercial biotech trait in 1996 when it introduced Roundup Ready soybeans. (2) The trait was known internationally as GTS 40-3-2. (3) Roundup Ready soybeans are resistant to the broad spectrum herbicide glyphosate, which Monsanto manufactures under the brand Roundup. (4) The United States Department of Agriculture (USDA) granted regulatory approval for Roundup Ready soybeans in 1994. (5) The United States Patent and Trademark Office (USPTO) granted Monsanto three patents to protect the invention, which allows crops with the traits to survive a glyphosate application. (6)

      Farmers quickly adopted the new trait, and by 1999 half of all soybeans that U.S. farmers planted contained the trait. (7) Monsanto achieved almost full market penetration, and by 2005 nearly 87% of soybean acreage was Roundup Ready. (8) In addition to Roundup Ready soybeans, Monsanto released a glyphosate-tolerant variant of most commercial U.S. crops. In 1998, Monsanto released Roundup Ready corn. (9) Adoption was slower, but still significant, reaching approximately 40% of U.S. acres by 2005. (10) Monsanto also released Roundup Ready canola in 1997. (11) Monsanto's patents on Roundup Ready technology expired in 2014, allowing farmers to save certain varieties of seed to replant the following year beginning in 2015. (12)

      Monsanto developed and patented a new version of the glyphosate tolerant trait, and first launched Roundup Ready 2 Yield soybeans in 2008. (13) The trait is known internationally as MON-89788-1. (14) On its website, Monsanto lists ten patents that the USPTO granted to it for Roundup Ready 2 Yield, (15) although some of the patents overlap with those granted for the first generation Roundup Ready trait. (16) Monsanto claimed that the Roundup Ready 2 Yield soybeans have a yield increase of 7-11% over first generation Roundup Ready soybeans. (17) The additional yield incentivizes farmers to switch to the new--and patent protected--trait. (18) Both the first and second generation Roundup Ready traits only alter the response to glyphosate; the rest of the phenotypic characteristics of the plant remain unchanged. (19)

      Prior to the introduction of Roundup Ready 2 Yield, any crop that survived a normal application of glyphosate perished, leaving only the crops containing the first generation Roundup Ready trait. (20) However, after the introduction of Roundup Ready 2 Yield, plants containing either the first or second generation Roundup Ready trait survived a glyphosate application. (21) Currently, there is no way for a person to visually distinguish whether the plant contains the soon-to-be unprotected first generation or the patented second generation Roundup Ready trait. (22) Genetic testing allows a scientist in a genetic lab to determine which generation of Roundup Ready trait the plant contains. (23)

   2. Saving and Replanting Seed

      After Monsanto's first generation Roundup Ready soybeans lose patent protection, farmers will be able to save and replant seed without infringing. (24) The issue of saving seed is complex because Monsanto possesses legal protections beyond the utility patent on the gene for commercial varieties of seed containing the Roundup Ready trait, such as Plant Variety Protection Act (PVP). (25) Monsanto has agreed not to enforce its PVP rights against farmers who choose to save and replant seed, but the exception extends only to certain Monsanto varieties. (26) The actual number of farmers that save and replant seed is yet to be seen, but given the challenges and availability of a higher yielding alternative, many farmers may choose to buy new seed each year instead of replanting. (27)

      1. Agronomic Practices

         Farmers grew soybeans, scientific name glycine max, on an estimated 76.1 million acres in 2012. (28) The dominant American crop is corn, scientific name zea mays, which farmers grew on an estimated 96.4 million acres in 2012. (29) While the numbers fluctuate, soybeans are the second leading crop behind corn. (30) A much less widespread crop is canola, scientific names brassica napus and brassica campestris, which farmers grew on 1.77 million acres in 2012. (31)

      2. Breeding Methods

         Corn and soybeans are prevalent in the United States, but their breeding methods are different. (32) Canola uses breeding methods that are similar to either corn or soybean, due to the recent introduction of hybrid canola varieties. (33) Corn is a hybrid crop, which means that it is a result of the crossing of two different varieties and when farmers plant the hybrid seed, they are planting seeds containing one set of genes from each parent. The hybrid plant expresses a mixture of the two genomes. (34) Soybeans are an inbred crop, where the plant contains two identical genetic copies and the plant expresses the single genome. (35) Canola is still commercially grown in both hybrid and inbred varieties. (36)

         The difference between hybrid and inbred seeds is important to the ability of farmers to save and replant seed. Inbred seeds are the same from generation to generation (excluding mutations), and therefore the farmer can save and replant seed knowing that the next generation will be the same as the first. (37) Hybrid seeds produce a genetic hodgepodge that is effectively useless to replant for the next season. (38) In reality, the only seeds that a farmer would be able to save and replant are inbreds. (39) This Note, therefore, focuses on soybeans and canola.

      3. Reproduction Methods

         How crops reproduce is important because it affects the likelihood that a farmer's field may become contaminated through wind-borne pollen transfer. (40) Soybeans are a self-pollinating plant, which results in very little pollen transfer to other plants outside the immediate vicinity. (41) Corn and canola are cross-pollinating plants, which result in pollen that can travel much greater distances. (42)

         The separation distances for confined field trials that the USDA requires reflect the type of pollination for different crops. (43) The USDA requires a separation distance of ten feet for soybeans between regulated and non-regulated varieties to prevent the trait from migrating to nearby plants. (44) This distance is 660 feet for corn and up to 1320 feet for certain types of canola. (45) While it is possible for soybean pollen to travel short distances, it is unlikely that farmers will be concerned about their fields being contaminated with a neighbor's pollen. Corn is subject to much more significant pollen travel, which may contaminate neighboring fields, but because farmers do not save seed due to agronomic practices, the issue is moot. (46) Canola presents the most significant risk of contamination of a patented trait through wind disbursement onto a neighboring field. (47) Canola also presents a large risk of patent infringement when contamination occurs because many farmers use seed that can be saved and replanted. (48)

   3. Judicial Consideration in Bowman v. Monsanto

      Until now, courts have only considered patent infringement of crops where there was no unpatented alternative trait with a phenotypically identical unpatented gene. (49) In Bowman v. Monsanto, the Court held that the patent exhaustion's doctrine does not apply to self-replicating technologies. (50) Patent exhaustion is the theory that once a patent holder sells a patented invention, the patent holder can no longer enforce the right to make use of the patent with respect to that particular item, even if that item is later sold to another person. (51)

      Monsanto requires farmers who...