Monsanto Technology LLC v Cefetra BV
A patent for a DNA sequence is infringed only where the sequence is performing its function, so imports of soy meal containing dead DNA did not infringe.
Facts
Monsanto held a European patent for a DNA sequence that, when inserted into soybean plants, made them resistant to a herbicide, Roundup. Soybeans with the sequence were grown in Argentina, where Monsanto had no patent, and soy meal made from them was imported into the Netherlands. The soy meal contained the DNA sequence, but it was no longer performing its function, because the plants were dead. Monsanto sued importers for infringement.
Legal principle
The Court of Justice held that there was no infringement. Under article 9 of the Biotechnology Directive, the protection conferred by a patent on a product containing or consisting of genetic information extends to all material in which the product is incorporated and in which the genetic information is contained and performs its function. Protection for a DNA sequence is therefore limited to situations in which the genetic information is currently performing the functions described in the patent. Since the DNA in the soy meal was not performing its function of making the plants resistant to the herbicide, there was no infringement.
Related cases on patents: claim construction and infringement
- Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48
- Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
- Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465
- Grimme Maschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110, [2011] FSR 7
- Improver Corp v Remington Consumer Products Ltd [1990] FSR 181
- Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9
- Schütz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16, [2013] RPC 16
- Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR 513
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