Monsanto's GM Soya Patent Appeal

As reported on the environmental news and commentary site Grist here, Monsanto are due to face proceedings at the EPO this coming Thursday (3 May) in an appeal regarding their European patent on genetically modified soya.

Hope Shand, the research director of one of the opponents of the patent, the neo-Luddite green group "Action Group on Erosion, Technology and Concentration" or ETC, writes,

"Instead of fostering agricultural research, breathtakingly broad patents are shutting down competition and stifling research. Perhaps no patent symbolizes the brokenness of the patent system more than Monsanto's European patent on all genetically engineered soybean varieties and seeds -- European Patent No. 301,749. Critics call it a "species-wide" patent because its claims extend to all biotech soybean seeds-- irrespective of the genes used or the genetic engineering technique employed -- unprecedented in its broad scope"

On Thursday, ETC will attempt to have the patent revoked "because it is technically flawed and morally unacceptable", according to Hope Shand.

The patent itself (prosecution file available here) is directed to a particular method of inserting 'foreign' genes in soybean cells, involving firing small inert particles containing the foreign gene sequences into soybean cells at high speed, with the result that some of the cells then take up this material and can be propagated to produce stable genetically altered lines. This method was not known to work for soybeans at least before the filing date of the patent, 20 July 1988, but the technique had been described previously in published journal papers.

There are a number of other objections to the patent, but the main one appears to come down to the form of claim 17, which claims,

"A soybean seed which will yield upon cultivation a soybean plant comprising in its genome a foreign gene effective to cause the expression of a foreign gene product in the cells of the soybean plant"

This claim is clearly broader than the methods disclosed in the patent, and appears to cover any genetically modified soybean seed, i.e. one having a 'foreign' gene in its genome. None of the opponents were able, during opposition proceedings, to show that GM soybeans were known before the patent was filed.

The question appears to the IPKat to be whether such broad claims should be allowed, when only one particular way of doing it was disclosed in the patent. If nobody else had been able to do it before the patent was filed, does this give the patent holder the exclusive right to prevent others from making GM soybeans, by whatever route? Does this matter? Why is this different from allowing protection for new pharmaceutical products? Shouldn't the first invention in a new field be allowed a justifiably broader scope? The IPKat leaves these questions open for others to discuss, and looks forward to seeing how the appeal goes.