[author: Antoinette F. Konski]
On October 5, 2012, the U.S. Supreme Court agreed to review the issue of whether the Federal Circuit erred by (1) refusing to find patent exhaustion that eliminates the right to control or prohibit the use of an invention after an authorized sale in patented seeds sold for planting; and (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies. Bowman v. Monsanto Co., Docket No. 11-796 (Supreme Court 2012), proceedings below, Monsanto Co. v. Bowman, 657 F.3d 1341 (Fed. Cir. 2011).
At the Federal Circuit, the court had refused to limit or ller upon the first sale thus allowing the patent owner to control the use of the seeds made by the plants grown from the sold seeds. While the case is based on whether the sale of patented, genetically modified seeds to a farmer who then grows crops and seeds from the genetically modified seeds cuts off the patent rights of the seller, this case is important for those in the biotechnology industry that patent and sell self-replicating technologies such as genetically modified cells. The case also is important to regenerative medicine that relies on stem cell technologies. A stem cell, by definition is a cell that can self-replicate, while producing cell progeny that are identical to the parent cell or produce cells that will mature into more specialized organ-specific cell types. Thus, the U.S. Supreme Court may answer the question whether a patentee of a stem cell to another.