Monsanto has lost its case against importers of soy meal from Argentina. The fact that traces of its patented DNA sequence are contained in these imports does not entitle the industrial giant to ban marketing of the soy meal in the EU, ruled the EU Court of Justice, on 6 July. The court issued the judgement in a case concerning the scope of the legal protection granted by the Biotechnology Directive (98/44/EC) ⁽¹⁾.

The firm, based in Saint Louis (United States), has held a European patent since 1996 on a DNA sequence which, once introduced into the DNA of a soybean plant, makes it resistant to the herbicide glyphosate (trade name ‘Roundup’), used commonly in agriculture. Farmers can thus eliminate weeds without harming soybean plant cultivation. Tests on soy meal imported from Argentina into the port of Amsterdam (Netherlands) showed the presence of traces of the DNA characteristic of RR soybean protected by Monsanto’s European patent, indicating that the imported meal had been produced using that type of soybean plant. Monsanto consequently applied for prohibition on the marketing of the meal in the Union. The Rechtbank ‘s-Gravenhage (court of The Hague, Netherlands) referred questions to the Court of Justice as to whether the mere presence of the DNA sequence is sufficient to constitute infringement of Monsanto’s patent when the soy meal is marketed in the European Union.

LIMITED PROTECTION

The court observed that the directive makes the protection conferred by a European patent subject to the condition that the genetic information contained in the patented product performs its function in the material in which the information is contained. It noted that the function of Monsanto’s invention is being performed when the genetic information protects the soybean plant against the action of glyphosate, but not when it is found in a residual state in soy meal, which is a dead material obtained after the soy has undergone treatment. As a result, the patent protection is not available even if the genetic information in the soy meal could possibly perform its function once again in another plant. For that to be the case, it would be necessary for the DNA sequence to be introduced in that other plant for protection under a European patent to be conferred in relation to that plant. Monsanto cannot therefore rely on the directive to seek a ban on marketing of the Argentinean soy meal. The court also found that the directive precludes a national rule - in this case in the Netherlands – from granting absolute protection to a patented DNA sequence as such, regardless of whether it performs its function in the material containing it. The criterion of actual performance of that function must be regarded as constituting an exhaustive harmonisation of the matter in the EU.