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ISIS Report 17/07/04

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

The sources for this article are posted on ISIS members’ website. Details here.

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 "stand-by" utility. To conclude otherwise would, in effect, confer patent protection on the plant.

Uncertain implications

The court, while confirming the validity of Monsanto’s patent on the transgene and modified cells, did not rule on the validity of patents on life forms, or whether it is right or wise to genetically modify plants. Neither did it answer the difficult questions about how GMOs can be controlled once released. These issues will have to be addressed by Parliament.

The 2002 Supreme Court decision that higher life forms, such as plants, are unpatentable still stands. Monsanto did not claim patent protection over a GM plant, only the modified genes and cells and the process for making them. However, the effect of this judgment is that Monsanto’s rights on a patented gene and cells extend to the (unpatentable) plant in which it is found, if the alleged infringer is judged to have used the patent; in Schmeiser’s case, by saving, planting, harvesting and selling in a commercial context.

A Canadian farmer’s right to save and use seeds generally should not be inherently jeopardised by the decision. Even plant varieties protected under the Plant Breeders’ Rights Act have an exemption, in that a "farmers’ privilege" applies, allowing farmers to save and replant seeds from a protected variety, on their own farm. (However, it does not allow farmers to exchange or sell seeds of a protected variety.)

But how the Plant Breeders’ Rights Act interfaces with the Patent Act in the light of this decision is unclear. Canada has ratified the 1978 Act of the International Union for the Protection of New Varieties of Plants (UPOV), which accepts that granting a plant breeders’ right on a given variety implies that no patent can be granted to the same variety. What happens when a patented gene inadvertently lands in (or is present in) a variety protected under the Plant Breeders’ Rights Act, which allows farmers to save seeds from that protected variety?

As canola pollen and seed are uncontainable, Monsanto could accuse virtually any farmer of ‘infringement’, simply because virtually every field is likely to inadvertently have plants bearing its patented genes. However, contamination of plants by patented genes, by itself, will not automatically be patent infringement in Canada. For the issue in Schmeiser’s case was not the adventitious arrival of Monsanto’s GM canola on his land. (The majority emphasized they were not considering the innocent discovery by farmers of "blow-by" plants.) Rather, what were pivotal were the acts of sowing and cultivation, so the conduct of farmers on discovering unwanted GM crops in their fields will be crucial.

Will saving and planting seed containing a patented gene without authorisation then be illegal? Perhaps, yes, if a farmer saves and reuses seed they know to be contaminated by a patented gene, instead of informing the company. Perhaps, no, if a farmer is able to rebut the presumption of use arising from possession by showing that they never intended to cultivate plants containing the patented material (e.g. quickly arranging for its removal). They could prove that the presence of patented genes was accidental, by showing that its concentration is consistent with that expected from unsolicited "blow-by" plants.

But, what concentrations are judged as attributable to "blow-by" plants? The decision is silent on this. Why does the burden of monitoring and reporting fall on the farmer? The judgement forces everyone who does not sign a technology-use agreement to accept responsibility for identifying contaminants and reporting them. Failure to do so incurs liability, as it did for Schmeiser. What about a plant that has more than one inadvertent patented gene? Such plants already exist. Will farmers now have to report for every crop, every company and every patented gene?

Furthermore, as the dissenting judges point out, it would be difficult for a farmer to rebut the presumption of use once they become aware that a plant containing patented genes was present - or likely to be present - on their land and continued to practice traditional farming methods, such as saving seed (as Schmeiser had done). They recommended that the complexities and nuances of "innocent bystander protection" in the context of GM crops be urgently considered by Parliament.

If a single contamination event contaminates self-saved seed, does this make the seed saver a permanent infringer? Prof. Ann Clark of Guelph University proposes that the only way to resolve this liability may be to destroy all the seed as one cannot distinguish contaminated from uncontaminated seed without spraying Roundup (in the case of herbicide tolerant genes), which itself kills uncontaminated seed. But then, who should bear the costs?

What about contaminated certified seed? Companies already recognize that it is impossible to segregate GM from non-GM seed and contamination has been found in certified seed stocks. Who is liable when GM seed arrives in a bag of non-GM seed?

What about patented genes and marker genes that are not genetically modified? Marker-assisted breeding could identify genes for various traits, for example, drought or salt tolerance, which exist naturally in local varieties. And once identified, these markers could be patented. Does the Schmeiser judgement mean that local varieties, selected through conventional plant breeding and including the work of generations of farmers and seed savers, would also come under the control of the patent holder of a gene, genetically modified or otherwise?

The flip side, Monsanto’s responsibility for its uncontainable technology, was not considered. Is Monsanto liable for contaminating the farmers’ fields? Can the companies be held accountable for their technology? The decision says nothing about these issues.

Already the Saskatchewan Organic Directorate’s Organic Agriculture Protection Fund has supported certified organic farmers in taking legal action to impose responsibility and hold biotech companies liable, for their patented genes. They are seeking compensation for damages caused by contamination of certified organic crops by Monsanto’s and Bayer’s herbicide tolerant canola, clean-up costs, and an injunction to prevent commercialization of Roundup Ready wheat if Monsanto tries to reintroduce it. This case is pending.

It seems that the Schmeiser judgement has raised more questions than it answers, and by not addressing the full implications of the uncontainability of patented genes, the judges have missed the point, and proliferated more confusion.

Some positives

The fact that the court found that Monsanto was owed none of the value of Schmeiser’s crop may, however, be an important counter to the finding of patent infringement. Growing and re-growing contaminated seed may not oblige a farmer to pay Monsanto anything, presuming that they are not benefiting from the herbicide tolerant gene by spraying Roundup. The company now has nothing to gain by taking such a farmer to court, so in effect, Monsanto’s ‘expansive’ patent may have lost some teeth against seed savers.

Monsanto had, in the past, threatened financial reprisals against farmers for alleged patent infringement. Knowing that contamination is unavoidable, wary farmers might have been persuaded to buy Monsanto’s seed to avoid such charges. The present ruling that the company was owed nothing of Schmeiser’s crop might make Monsanto think again before using such a strategy of intimidation to expand its market.

Significantly, the case has exposed Monsanto’s unacceptable and unnecessary behaviour toward Schmeiser and other farmers. As Ann Clark points out, the other two companies (Bayer and Pioneer) that market herbicide tolerant canola in Canada do not resort to the Patent Act to protect their intellectual property nor prosecute farmers whose fields are inadvertently contaminated with their patented genes. The dissenting judges also noted that Monsanto in any case licenses the sale of seeds produced from the patented invention and imposes contractual obligations (e.g. prohibiting seed saving) on the licensee.

Schmeiser raised awareness globally on many issues – GM crop contamination, patents over living organisms, the need to protect farmers’ rights, and corporate control of our food and agriculture. He says, "This ruling is an injustice", and many agree with him. The struggle now moves from the courts to the political arena. The tide may yet turn.


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