Monsanto v. Schmeiser: patent protection for genetically modified genes and cells in Canada.

• Author: Law, Grace S.

On May 21, 2004, the Supreme Court of Canada rendered its decision to uphold Monsanto's claim of patent infringement against Percy Schmeiser (1). McLachlin C.J. and Fish J. wrote for the majority, with Major, Binnie and Deschamps JJ. concurring. The minority judgment was written by Arbour J., with Iacobucci, Bastarache and LeBel JJ. concurring. Many members of the biotechnology industry welcomed the decision. However, the decision still leaves some issues unresolved with respect to the scope of protection afforded to biotechnology-related inventions.

By way of background, glyphosate is an herbicide which ordinarily kills plants. A glyphosate resistance gene, which is the subject of Monsanto's Canadian Patent No. 1,313,830 entitled "Glyphosate-Resistant Plants.", confers resistance to the glyphosate-containing herbicide Roundup[TM]. Therefore, plants containing the patented gene will survive spraying with Roundup. Such a trait is useful to farmers, as it allows them to spray their crops for weeds even after canola plants have emerged. Canola seeds containing the patented gene are sold under the trademark "Roundup Ready Canola[TM]" and Monsanto charges a $15 per acre license fee to farmers to grow the seeds.

In 1997, Percy Schmeiser, a canola farmer, planted seeds saved from one of his fields, as was his usual practice. He sprayed a three-acre patch of this crop with Roundup, and found that 60% of the plants survived the spraying. The origin of these Roundup-resistant plants is unclear, but it is possible that seed blew onto the Schmeiser property from neighbouring farms, where Roundup Ready Canola was being cultivated. Mr. Schmeiser harvested the Roundup-resistant canola from the patch he had sprayed and kept it separate from the rest of his crop. In 1998, Mr. Schmeiser had this harvest treated for use as seed, and used it to plant approximately 1,000 acres. Testing of samples of canola plants taken from Mr. Schmeiser's fields sown in 1998 confirmed that 95 to 98% of the canola was Roundup resistant. Mr. Schmeiser did not obtain a licence from Monsanto to grow the canola.

In August 1998, Monsanto sued Mr. Schmeiser for patent infringement. At the Federal Court Trial Division, the trial judge found that Monsanto's patent was valid and infringed by Mr. Schmeiser (2). This finding was upheld by the Federal Court of Appeal (3). The case was further appealed to the Supreme Court of Canada. By a narrow 5 to 4 majority, the Supreme Court of Canada also found that the patent was valid and that Mr. Schmeiser had infringed it.

Both the majority and minority agreed that the claims in Monsanto's patent are valid. The claims are directed to a modified glyphosate resistance gene, cloning vectors containing the gene, various plant cells containing the gene, and a process for inserting the gene into cells. However, the claims are not directed to modified plants containing the gene. The patent is therefore not directed to a higher life form, which the Supreme Court of Canada had previously decided did not constitute patentable subject matter in the case of Harvard College v. Canada (Commissioner of Patents). (4)

Where the majority and minority opinions diverge is on the scope of protection afforded by the claims in Monsanto's patent, and whether Mr. Schmeiser's activities infringed Monsanto's patent, contrary to s. 42 of the Patent Act (5). According to s. 42, a patent grants to the patentee the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. The main issue at the Supreme Court of Canada was the definition of the word "using," and whether or not Mr. Schmeiser's activities could be construed as "use" of Monsanto's invention.

According to the majority view, a defendant has "used" a patented invention when the...