Canada - Patent Protection for Genes
In the case of Monsanto Canada Ltd. v. Schmeiser, the Supreme Court of Canada had to decide whether claims to a chimeric plant gene were infringed by the growth of plants containing the gene. The gene was one having certain defined elements and which was adapted to cause sufficient expression of a fusion polypeptide to enhance the glycophosphate resistance of a plant cell transformed with the gene. This enhanced resistance enabled the plant to survive spraying with the herbicide Roundup®. This enabled a farmer to spray a field planted with seed containing the new gene with Roundup® herbicide to kill weeds while plants growing from the gene-containing seed continued to grow.
As noted in our March 1996 Newsletter, the Supreme Court of Canada had in the Harvard Oncomouse case previously held that higher life forms, including plants, were unpatentable in Canada. Furthermore, as noted by the dissent in the Monsanto case, there is authority in Canada to construe a patent claim in such a way as to preserve its validity by excluding unpatentable subject matter from its scope while upholding the validity of the claim on the basis of an interpretation that did not extend to such unpatentable subject matter. Nevertheless, in the Monsanto case the validity of the claim was upheld and the majority of the court held that the growth of the plants in question was a use of the patented invention and thus an act of infringement.
A key element of the court's decision was its analysis of what is meant in the patent statute by "use" of the invention claimed. After considering dictionary definitions of both the word "use" as used in the English text and "exploiter" as used in the French text and reviewing both English and Canadian case law back to the mid-nineteenth century, the court found that:
1. "Use" or "exploiter" in their ordinary dictionary meaning denote utilization with a view to production or advantage.
2. The basic principle in determining whether the defendant has "used" a patented invention is whether the inventor has been deprived, in whole or in part, directly or indirectly, of the full enjoyment of the monopoly conferred by the patent.
3. If there is a commercial benefit to be derived from the invention, it belongs to the patent holder.
4. It is no bar to a finding of infringement that the patented object or process is part of or composes a broader unpatented structure or process, provided that the patented invention is significant or important to the defendant's activities that involve the unpatented structure.
5. Possession of a patented object or an object incorporating a patented feature may constitute "use" of the object's stand-by or insurance utility and thus constitute infringement.
6. Possession, at least in commercial circumstances, raises a rebuttable presumption of "use".
7. While intention is generally irrelevant to determining whether there has been "use" and hence infringement, the absence of intention to employ or gain any advantage from the invention may be relevant to rebutting the presumption of use raised by possession.
A minority of the court would have construed the claims to confine them to the genes and cells containing them when used in a research environment on the basis that the claims should not be construed to cover plants which are themselves unpatentable.
