By Donald Zuhn —

A group of universities,
entities affiliated with universities, higher education associations, and
entities involved in university technology management, in an amici brief filed in Bowman v. Monsanto, argue that reversal
of the decision that petitioner Vernon Bowman infringed Monsanto's patents on
glyphosphate-resistant soybeans "would weaken patent rights for
artificial, progenitive technologies and upset the flourishing innovation
system created by U.S. patent law through the Bayh-Dole Act and technology
transfer organizations."  Amici therefore urge the Supreme Court
to affirm the decision of the Federal Circuit in Bowman v. Monsanto.  Oral
argument in the case is scheduled for tomorrow.

The brief begins by
discussing the impact of the Bayh-Dole Act in helping federally funded technologies
reach the public, noting that before the Bayh-Dole Act was passed in 1980, "only
5 percent of patents owned by the Federal Government were used by the private
sector."  The brief also notes that
while U.S. universities obtained only 264 patents in 1979, more than 37,000
patents issued to U.S. universities from 2002-2011.  The brief points out that from 2007-2011, more
than 3,000 startup companies were formed as a result of research performed
under the Bayh-Dole Act.

In a footnote, the brief
indicates that universities spent $65.1 billion for research in 2011 — more
than half of which was spent in the life sciences — with nearly two-thirds of
the expenditures coming from the federal government.  Quoting an article in the Harvard Journal of Law and Technology, which states that "[s]tudies have shown that for every dollar of
government-sponsored research, up to $10,000 is required to fully develop,
commercialize, and realize a useful product," amici argue that "[p]rivate
sector entities will incur these costs only if they are properly incented to do
so," adding that "[p]atents, and the valuable exclusionary rights
they confer, provide the necessary incentive."

Of the many technologies
discovered and developed under the Bayh-Dole Act, amici argue that significant and numerous artificial, progenitive
technologies have been conceived, developed, and licensed as a result of the
Act.  The brief defines "artificial,
progenitive technology" as "a broad classification that includes any
human-made technology in which a 'parent' combination, substance, or
manufacture is used to generate progeny having the same genetic makeup or characteristics
as the parent."  Amici contend that reversal in this case
"would effectively shorten the patent term for patents covering
artificial, progenitive technologies, thus making it much more difficult, if
not impossible, for patent owners and their licensees to recover the costs of
developing such inventions for market," and in effect "force patent
owners to try to recoup all of their research and development costs in the
first sale of the technology."  The
brief declares that the "practical result" of a reversal in this
case:

[W]ould be to
create disparate patent terms — a shorter term for artificial progenitive
technologies and a longer term for all other inventions.  For the former, patentees and their licensees
would receive protection only for as long as it takes first buyers to saturate
the market with progeny.  For the latter,
patentees and their licensees would receive protection for the full statutory
patent term.

Stating that "Bowman
and his supporting amici erroneously
suggest that the only way to 'make' the patented seeds as envisioned by §
271(a) is to genetically engineer
them using the techniques disclosed in Monsanto’s patents," amici argue that "it cannot be that
under § 271(a), 'making' a patented article requires engineering it from square
one."  The brief instead indicates
that "[t]here is, however, no support in this Court's precedent for the
notion that 'making' an infringing article necessarily involves building that
article from its starting materials or building blocks."  Amici
suggest that "[g]enetic modification is one way to 'make' Roundup Ready®
seeds, but not the only way."

In response to the argument
that "affirmance will render 'innocent infringers' vulnerable to liability
for inadvertently planting Monsanto's Roundup Ready® seeds and thereby making
new infringing seeds," the brief counters that "patent holders like
Monsanto have no incentive to litigate against truly innocent infringers,"
as "[t]he cost of doing so would dwarf the value of available remedies."  Amici
also note that:

[T]he supposed "innocently"
infringing farmer would achieve the benefits of the patented invention only if,
while believing his crop to be susceptible to Roundup® herbicide, he
nevertheless applied Roundup®, an application that would (in his mind) likely
decimate his crop.  Of course, if a
farmer harvested the inadvertently present patented seeds once, realized they
were Roundup Ready®, yet continued to plant the progeny seeds, apply Roundup®,
and reap the benefits of the patented Roundup Ready® trait, he could no longer
claim to be an "innocent infringer."

As for the petitioner, amici point out that "[t]he record dispels
any notion that Bowman 'innocently' made Monsanto's patented seeds,"
noting that "Bowman systematically used the grain elevator as a type of straw-man
to circumvent Monsanto's patent rights."

Amici
on the brief include the Wisconsin Alumni Research Foundation, Association of
University Technology Managers (AUTM), Association of Public and Land-grant
Universities, Association of American Universities, The Regents of the
University of California, The Board of Trustees of the University of Illinois,
University of Florida, Duke University, Emory University, University of Georgia
Research Foundation, Inc., Iowa State University of Science and Technology,
NDSU Research Foundation, University of Iowa, University of Missouri-Columbia,
South Dakota State University, NUtech Ventures, University of Nebraska-Lincoln,
University of Kentucky, University of Kansas, Kansas State University, Montana
State University, and University of Delaware.

For additional information
regarding this topic, please see:

• "WLF Files Amicus Brief in Support of Respondents
in Bowman v. Monsanto," February
7, 2013
• "U.S. Government
Requests Argument Time in Bowman v.
Monsanto — at Monsanto's Expense," February 5, 2013
• "It Ain't
Necessarily So Down on the Farm: Not All Farmers Agree with Farmer Bowman in Bowman v. Monsanto," January 31,
2013
• "BayhDol25 Files Amicus Brief in Bowman v. Monsanto," January 30, 2013
• "Government Sticks
to Its Guns in Bowman v. Monsanto Amicus
Brief," January 28, 2013
• "IPO Files Amicus Brief in Support of Respondents
in Bowman v. Monsanto," January
24, 2013