In the past, Monsanto has been successful in defending the company’s patents concerning the genes and modified cells present in genetically modified (GM) plants in both the United States and in Canada. Are Monsanto’s new products going to be a hot topic of debate? Likely yes, but maybe not for the reasons you would expect.
In previous cases, Monsanto’s patents concerned a GM crop in which the plant’s DNA had been modified using genetic engineering to introduce a novel trait not naturally expressed in the species. While it has been established that the extraneous genes introduced into the plants are patentable, plants themselves are generally not. Recently, with the aid of technology, Monsanto has been breeding “superveggies” naturally with properties almost as wondrous as the GM crops. If these plants are not patentable, what intellectual property rights protect the investment the breeder has made in developing new plant varieties?
Monsanto is best known for changing the way the world grows food. The company is the leading producer of genetically engineered seeds of commodity crops such as corn and soybeans. By inserting new DNA into an organism’s genome, plants can be endowed with characteristics not typically observed in nature. Of particular note are Monsanto’s Roundup Ready crops which are resistant to the herbicide glycophosphate. In order to protect the research and development required to produce such GM organisms, farmers planting GM crops are required to enter into a contract with Monsanto agreeing that they will not save and replant seeds produced from the GM seeds purchased from Monsanto. Monsanto’s patents grant the company the exclusive rights for the use of their invention thereby preventing third-parties who have not signed a contract from acquiring GM seeds and planting them.
However, Monsanto’s latest line of produce have been developed the old fashioned way… sort of. Beneforté broccoli produces 2-3 times the phytonutrients of normal varieties, the EverMild onion contains fewer tear-inducing chemicals, and Frescada Lettuce tastes sweeter and has improved nutritional content. However, despite their unusual properties, none of these products have been genetically engineered. Using the technique of Marker-Assisted Selection (MAS), researchers were able to identify genes that led to desirable traits and then bred plants with these characteristics. By scanning the DNA of the resultant seeds, the technique allows for the determination of whether a seed will grow into a plant having the desired property without having to wait. This greatly increases the speed at which plants with the desirable traits can be bred and the number and variety of traits that can be introduced. What may have taken countless generations to occur in nature, if it were to ever occur at all, can be accomplished in a matter of years using MAS.
However, as the plants have been bred “naturally” and have not been genetically engineered, they are not patentable in the same way as GM crops could be. In Pioneer Hi-Bred Ltd v Commissioner of Patents, Marceau J. held that the terms “manufacture” and “composition of matter” as used in the definition of “invention” in s. 2 of the Patent Act “would be distorted if a unique but simple variety of soybean were to be included within their scope” and as such “the soybean variety developed by the appellant cannot be the subject-matter of a patent of invention.” A contract with a farmer may prevent that farmer from planting subsequent generations of seeds, but what is to stop a third-party from acquiring a seed and taking advantage of Monsanto’s extensive investment in research?
Member countries of the World Trade Organization are required to provide a minimum standard of intellectual property protection as outlined in the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs). Article 27(3)(b) allows a member to exclude from patentability plants and biological processes for the production of plants. However, the same provision requires members to provide protection for plant varieties either through patents or a sui generis rights system. In addition, the International Union for the Protection of New Varieties of Plants (UPOV) requires members to provide an intellectual property right specifically for plant varieties. Collectively these rights are referred to as Plant Breeders Rights (PBR). In the United States the Plant Variety Protection Act grants exclusive control over sexually reproduced plant varieties and the legal protection of PBR in Canada are set out by the Plant Breeders’ Rights Act and regulations.
In order to qualify for protection under the Plant Breeders’ Rights Act, a plant must be new, identifiable and distinguishable from other varieties (distinct), stable after repeated propagation and have homogenous features after sexual reproduction. These rights provide the holder the exclusive right to sell and propagate the plant variety in Canada for a period of up to eighteen years. While Plant Breeders’ Rights offer a method to protect the intellectual property of plant varieties in Canada, they come with some exemptions. For example, s. 32(1) of the Plant Breeder’s Rights Act stipulates that a compulsory licence for the use of a plant variety can be granted to persons that apply. Article 15(2) of the 1991 UPOV convention provides an (optional) exception to Breeder’s rights where a farmer may collect seeds of the protected plant variety from a harvest and use them to plant future crops.
While indiviudal plant varieties may not be patentable, there is still some debate whether plants or plant material other than plant varieties are patentable. Plant Bioscience Ltd. was granted a patent for a “method for the selective increase of the anticarcinogenic glucosinolates in brassica species” but the MAS method was later found to be an “essentially biological process” which is excluded from patentability. Currently, the Enlarged Board of Appeal of the European Patent Office is deciding whether the products of such processes are patentable. Although I would argue that Monsanto’s “supperveggies” are certainly innovative and represent a significant investment in research, its seems that for now they won’t be afforded the same protection as their GM counterparts.
Corey McClary is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.
 Pioneer Hi-Bred Ltd v Commissioner of Patents,  3 FC 8 at paras 9-11 (FCA).