For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 9 March 2010

"Soy far, soy good" for Argentine importers

It's available in various official European Union languages, including Latvian, but not in English. Still, with the help of his friends, the IPKat has been able to piece together the deeper inner meaning of Advocate General Mengozzi's Opinion in Case C-428/08 Monsanto Technology LLC v Cefetra BV and others, a reference to the Court of Justice of the European Union for a preliminary ruling from the Dutch Rechtbank ‘s‑Gravenhage.

Right: Monsanto's latest genetically modified bean?

From the talented Stephanie Bodoni (Bloomberg) the IPKat learns that the Advocate General is advising the Court of Justice to rule that Monsanto, the world’s biggest seed company, can’t rely on a European patent for its Roundup Ready soybeans as it seeks to block imports of soy meal from Argentina. This is because the European patent for the trait that makes soybeans resistant to some herbicides doesn’t extend to soy meal made from the patented seeds.

Argentina, the world’s third-biggest soybean exporter after Brazil and the US, is one of the few countries where Monsanto does not hold a patent on the herbicide-resistant seeds. However, a ruling that Monsanto's European patent is enforceable would let it block those imports.

During 2005 and 2006, St. Louis-based Monsanto had loads of soy meal from Argentina impounded in Amsterdam harbour. Tests showed the products contained some of the patented seed traits and Monsanto sued the importers for infringement. A Dutch court, hearing the dispute in 2008, sought the EU tribunal’s guidance. While Monsanto argued the patented trait in the soybeans remained under its protection after the beans had been processed into soy meal, the importers argued the patent’s scope is not so wide under EU biotechnology rules.

According to the Advocate General, protection for patents that cover genetic sequences is limited to situations where the genetic information is currently performing the functions described -- but there is a limit to how far Monsanto can stretch itsprotection.

Apparently in 2008 68.5% of Argentine exports of soybeans and soy products went to the EU,
according to data compiled by the Rosario Cereals Exchange.

The AG's Opinion, in French, looks like this:

«Dans le système de la directive 98/44 ... relative à la protection juridique des inventions biotechnologiques, la protection conférée à un brevet relatif à une séquence génétique est limitée aux situations dans lesquelles l’information génétique exerce actuellement les fonctions décrites dans le brevet. Cela vaut aussi bien pour la protection de la séquence en tant que telle que pour la protection des matières dans lesquelles elle est contenue.

La directive constitue, dans les domaines qu’elle traite, une réglementation exhaustive de la protection conférée sur le territoire de l’Union à une invention biotechnologique. Partant, elle s’oppose à une législation nationale qui conférerait aux inventions biotechnologiques une protection plus étendue que celle prévue dans la directive.

Le fait qu’un brevet ait été accordé avant l’entrée en vigueur de la directive n’a aucune incidence sur la réponse à donner aux précédentes questions préjudicielles.

Les dispositions de l’accord ADPIC ne sont pas contraires à la directive telle qu’elle est interprétée dans les réponses aux précédentes questions préjudicielles».
This means, roughly:

"Under Directive 98/44 ... on the legal protection of biotechnological inventions, the protection afforded to a patent on a gene sequence is limited to situations in which genetic information currently performs the functions described in the patent. This applies both for the protection of the sequence as much as for the protection of materials in which it is contained.

The Directive is, in the areas it treats, a comprehensive regulation of the protection conferred on the Union territory of a biotechnological invention. Accordingly, it precludes national legislation which would give biotechnological inventions greater protection than that provided in the Directive.

The fact that a patent has been granted before the entry into force of the Directive does not affect the response to be given to previous questions.

The provisions of the TRIPS Agreement do not conflict with the Directive as interpreted in the answers to previous questions".
Says the IPKat, while the AG's Opinion is non-binding, it is accepted in maybe 75% of references. Given that this Opinion will be seen by economists as pro-trade and anti-patent, it probably reflects the political will of the European Commission to free the Union from what it sees as the shackles of repressive and anticompetitive monopoly exploitation -- particularly Monsanto will be seen as a big, bustling, bullying business which has already been extremely well remunerated for its R&D. As such, Monsanto may attract little sympathy as a litigant. However, whatever the court rules will apply equally to the small, struggling bio business which lacks any clout apart from the fragile patent monopoly. Says Merpel, Advocate General Mengozzi clearly envisages broader protection for perfume trade marks than for patented inventions: is this an indication to investors as to where they can more usefully invest their money?

Are soybeans bad for puss? Click here
Are soybeans good for pus? Click here
Cat seed here

5 comments:

Anonymous said...

On the assumption that the case refers to this patent:

https://data.epo.org/publication-server/getpdf.jsp?pn=0546090&ki=B2&cc=EP

I have difficulty seeing how the Opinion is anti-patent. None of the claims appear to me to be suitable for blocking the import of soy meal.

Anonymous said...

Monsanto has repetadly shown in the different infringement proceedings that the imported soy meal contains traces of polynucleotides as defined in claims 1 to 6 of the '090 patent. Therefore, importing the soy meal into a State where the patent is in force implies infringement of the claims directed to the polynucleotide.

Anonymous said...

If it is claim 7 you are referring to, this states
"adapted to cause sufficient
expression of the fusion polypeptide to enhance the glyphosate tolerance of a plant cell transformed with said DNA
molecule". I think it is somewhat unlikely that soy meal is capable of exhibiting tolerance to glyphosate.

Anonymous said...

Claims 1-6 also claim DNA sequences and the presence of such a sequence in the soy meal would seem to be sufficient to infringe the claim (except now for the opinion of the Advocate-General).
But also claim 7 would qualify, since the characterizing clause that is mentioned by the last anonymous is only conditional "if transformed with said DNA molecule".

Anonymous said...

It appears to me that the problems this patent has are more connected with questions of construction rather than legal questions to the ECJ relating to the Biotech directive.

The UK courts held in respect of claims 1-6 that "isolated" means "isolated" - no surprise there then. Claim 7 does appear to be more tricky - does the recombinant DNA have to be at least suitable for transforming a plant cell?

Anyway, the AG's opinion is now in English, with the official translation of the proposed answers being:

Under the system established by Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions, the protection for a patent relating to a DNA sequence is limited to situations in which the genetic information is currently performing the functions described in the patent. That holds true both as regards the protection of the genetic information as such and as regards the protection of the materials in which that genetic information is contained.

In the areas with which it deals, Directive 98/44 constitutes an exhaustive body of rules governing the protection to be recognised in the territory of the European Union as accruing to a biotechnological invention. As a consequence, Directive 98/44 precludes national legislation from offering, in relation to biotechnological inventions, patent protection wider than that provided for under that directive.

The fact that a patent was granted before the entry into force of Directive 98/44 has no bearing on the answers to be given to Questions 1 and 2.

The provisions laid down in the TRIPS Agreement do not conflict with Directive 98/44, as interpreted in accordance with the proposed answers to Questions 1, 2 and 3.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':