A sharply divided Supreme Court of Canada made biotechnology history yesterday with a 5-4 ruling stating that plant genes and modified cells can be patented, regardless of whether they later develop into plants.
The case involved a 73-year-old Saskatchewan farmer, Percy Schmeiser, who became an international cause célèbre after Monsanto Canada Inc. took him to court for violating its patent for genetically engineered canola seeds.
Yesterday's ruling was an enormous relief for the biotechnology industry, but horrified its critics. It also exposed a deep division in the court, with both factions quarrelling openly about their grasp on patent law, jurisprudence and simple logic.
"Whether or not patent protection for the gene and the cell extends to activities involving the plant is not relevant to the patent's validity," the majority judgment concluded.
"In light of all the relevant considerations, the appellants used the patented genes and cells, and infringement is established."
"By cultivating a plant containing the patented gene and composed of the patented cells without licence, the appellants deprived the respondents of the full enjoyment of the monopoly."
As the first top court ruling involving the patentability of plant and seed genes, the decision was hailed globally as a signal that Canada will protect intellectual property in fields such as health care and agriculture.
"There was a great deal of concern in the biotech world about where our courts were going," said Eileen McMahon, a lawyer specializing in intellectual property. "Not only have thousands of patents already been issued, but thousands more are pending. There was huge attention being paid by American and European companies to this ruling."
Chief Justice Beverley McLachlin and Mr. Justice Morris Fish compared the genes in a seed to a structure made of Lego blocks, saying a patent infringement would be found even if just the individual blocks were patented.
"The case is different from Harvard Mouse, where the patent refused was for a mammal," they said on behalf of Mr. Justice Ian Binnie, Mr. Justice Jack Major and Madam Justice Marie Deschamps.
However, Madam Justice Louise Arbour testily dismissed such comparisons as unrealistic, and accused the majority of departing from its recent Harvard Mouse ruling, which infuriated industry by refusing a patent to a genetically engineered laboratory mouse.
Unlike Lego blocks, she said, plants are living things that grow steadily based on their genetic structure. A reasonable person would conclude that "gene claims and the plant-cell claims should not be construed to grant exclusive rights over the plant and all of its offspring," she said.
"The plants containing the patented gene can have no standby value," she said. "To conclude otherwise would, in effect, confer patent protection on the plant."
The majority shot back that Judge Arbour was "flying in the face" of century-old patent law. They also said that her attack was built on a legal point barely even argued during the appeal.
The decision got a scathing review from critics, who said it will lead to patents for everything from stem-cell research to cloned mammals.
"This is a horrible, horrible decision," said Nadege Adam, a spokesman for the Council of Canadians. "It gives a green light to the biotechnology industry to patent anything they like. The Supreme Court has said that if you patent a gene, we'll extend your protection right up to an entire life form. We need politicians to step in immediately. This was a public policy decision that should never have taken place in the courts."
Monsanto's gene, known as Roundup Ready, makes canola plants resistant to a common weed-control herbicide the company markets. Its progeny are equally resistant.
In 1997, the company found canola produced from its seed growing on Mr. Schmeiser's farm. Monsanto did not claim protection for the genetically modified plant itself, but only for the genes and the modified cells of which it is composed.
Mr. Schmeiser insisted throughout that the seed somehow blew onto his fields from passing trucks or from neighbouring farms that had paid Monsanto Canada Inc. the licensing fee of $15 an acre to use it.
He was pleased yesterday that the court reversed an earlier order of legal costs that would have cost him $250,000. "I would have lost my farm," he said.
He will not have to pay a damage because Monsanto failed to produce evidence showing the profit he made by infringing its patent.