Once upon a time, a farmer purchased a magic bean. The farmer planted his magic bean, as farmers do. The magic bean grew into a magic beanstalk and made more magic beans. The farmer harvested the magic beans, as farmers do, and saved the new magic beans for the next year.  For eight years, the farmer planted his new magic beans, grew new magic beanstalks and harvested magic beans for re-planting.
Monsanto, which owned a patent on the magic bean, filed suit against the farmer. Monsanto believed that the farmer infringed Monsanto’s patent because the farmer made copies of the magic beans, violating the prohibition on making or using a patented product. Monsanto’s beans were magic because they were genetically modified to survive treatment with glyphosate herbicides. Use of the genetically modified bean allowed the farmer to kill the weeds in the farmer’s fields using herbicides without damaging his crop.
The farmer believed that once Monsanto sold the magic bean, then Monsanto had no further rights to the bean. The farmer’s friends agreed. The farmer argued the doctrine of ‘patent exhaustion,’ which means that once a patent owner sells a patented product, the purchaser and any subsequent purchasers can use or sell the product and the patent owner has no further rights to control the patented product. In this case, the genetically modified soybeans were twice-removed from Monsanto – Monsanto sold the patented soybeans to farmers, the farmers planted the beans, raised crops and sold their crops to a grain elevator, and the grain elevator sold soybeans from the crops to Vernon Bowman, the farmer of our fable.
The case of the magic bean went all the way to the Supreme Court. On May 13, 2013 a unanimous Court ruled in favor of Monsanto.  The Court concluded that the doctrine of ‘patent exhaustion’ applies only to a particular patented article sold, in this case each genetically-modified soybean sold by Monsanto. The doctrine allows the farmer to plant or eat soybeans purchased from Monsanto, to grow a crop and to sell the crop. For soybeans that had the genetic trait and that Mr. Bowman purchased from the grain elevator, Mr. Bowman could re-sell those soybeans, feed the soybeans to animals or eat the soybeans.  However, ‘patent exhaustion’ did not allow Mr. Bowman to make copies of the patented soybeans. Otherwise, a patent for a seed could never be of any value. The patent owner could sell the first seed, which would then be copied by infringers, using the self-replicating nature of the seed. The Court expressly limited the ruling to the facts of the case, recognizing that other situations may arise with other self-replicating inventions, such as computer programs, that might require a different result.
The facts were favorable to Monsanto – Mr. Bowman acted to isolate and duplicate the patented Roundup Ready® soybeans and to take advantage of the herbicide-resistant genetic trait. He treated his fields with glyphosate herbicide, ensuring that only soybean plants with the Monsanto-owned trait survived. He also was familiar with the Roundup Ready® beans and used Monsanto-supplied beans for some of his needs.
The Monsanto patents address DNA having specific characteristics and seed and plants containing that DNA. The Monsanto genetic modification now has been part of the environment for years and eventually will find its way as a contaminant into many, if not all, soybean crops. The Court was silent on an issue raised in friend-of-the-court briefs; namely, what happens when an organic farmer who does not use herbicides saves seed contaminated with the Monsanto genetic modification. Isn’t the organic farmer infringing Monsanto’s patent? In a related question, how can any farmer ever grow any soybeans without being forced to buy Monsanto’s seed due to unintentional genetic contamination? Those questions currently are in the courts in Organic Seed Growers & Trade Association v Monsanto.
You have conceived of a wonderful new invention and you want tell everyone, but you are not ready for the expense of a patent application. Should you open your mouth?
As of March 16, 2013 the PTO stopped accepting or reviewing applications for SIRs. Before March 16, the SIR was a technique to notify the world of an invention that the invention owner did not wish to patent. The effect of the SIR was to dedicate the invention to the public so that anyone could make, use and sell the invention and no one could file a new patent application for it.  SIRs became largely redundant when the U.S. moved to the system of publishing utility patent applications eighteen months after filing.
We’ve said it before, but it bears repeating. Remember that on or after March 17, 2013, you MUST protect your invention before offering the invention for sale or using the invention in public. Otherwise, you lose your U.S. patent rights instantly and forever. This is a major change in the law and requires an entirely new level of paranoia on the part of inventors and the companies that employ them. How can you protect yourself and your company?
