Monsanto try yet again

Last year, the IPKat informed his readers of a case at the High Court centred around GM soya, involving alleged infringment through importation of soya meal into the UK. Monsanto, the proprietors of a European patent relating to Glyphosate-resistant (a.k.a. "RoundUp Ready") soya, failed to secure a judgment of infringment against Cargill International. To simplify a long and complicated story, Monsanto were unable to show that what was imported actually fell within the scope of the patent claims they had been granted.

Monsanto have not, however, given up just yet. The UK-IPO have just announced that a referral has been made (C-428/08 Monsanto Technology) to the Court of Justice of the European Communities under Article 234 EC for a preliminary ruling on the following:

"The scope of protection conferred by Articles 8 and 9 of Directive 98/44/EC on the legal protection of biotechnological inventions ("the Directive"). The reference arises in the context of patent infringement proceedings between Monsanto Technology ("Monsanto"), a company engaged in research, development and commerce in agricultural products which was granted a European patent in respect of a particular DNA sequence, and a number of companies which trade in soy meal as well as the state of Argentina, which is a producer of soy meal.

The referring court asks whether the protection afforded by Article 9 of the Directive can be invoked even in a situation where the product (in this case the DNA sequence) forms part of a material imported into the European Union (soy meal) and does not perform its function at the time of the alleged infringement, but has performed such a function (in the soy plant) in the past or would possibly be able to perform such a function again after having been isolated from that material and inserted into the cell of another organism. The referring court further asks, inter alia, whether the Directive precludes national patent legislation from offering (in parallel) absolute protection to the product (the DNA), regardless of whether that DNA continues to perform its function."

The IPKat thinks that this is probably pushing the Biotech Directive a bit too far, which has probably only been used because this is the only way that a European-level judgment on the issue could be made. There is, of course, no European-level court on patent matters (yet). The real issue, as was clearly set out by Mr Justice Pumfrey, is about whether a claim to a process and a raw product can 'reach through' all the way to a final product that has been heavily processed beyond almost all recognition.

Merpel would like to know: which court?

Postscript: Trevor Cook of Bird&Bird has kindly informed the IPKat that the reference comes from Monsanto Technology LLC v. Cefetra B.V., 249983/ HA ZA 05-2885, a decision of the Hague District Court from earlier this year.  The decision in full has been uploaded on the IPKat's Google Groups website.