Monsanto Technology LLC v Cefetra BV and Others

This case raised, for the first time, the question of the scope of a European patent relating to a DNA sequence. Monsanto, which has held since 1996 a European patent relating to a DNA sequence which, once introduced into the DNA of a soy plant, makes that plant resistant to a certain herbicide, sought to oppose imports into a Member State of soy meal produced from such genetically modified soy in Argentina, where there is no patent protection for Monsanto’s invention. The national court before which proceedings were brought asked the Court of Justice whether the mere presence of the DNA sequence protected by a European patent is sufficient to constitute an infringement of Monsanto’s patent when the meal is marketed in the European Union. According to the Court, Directive 98/44/EC makes the protection conferred by a European patent subject to the condition that the genetic information contained in the patented product or constituting that product is currently performing its function in the material in which it is contained. The Court observed in this regard that the function of Monsanto’s invention is performed when the genetic information protects the soy plant in which it is incorporated against the effect of the herbicide. This function of the protected DNA sequence can no longer be performed when it is in a residual state in the soy meal, which is a dead material obtained after the soy has undergone several treatment processes. Consequently, the protection under the European patent is not available when the genetic information has ceased to perform the function it had in the initial plant from which it is derived. Nor can such protection be granted on the ground that the genetic information contained in the soy meal could possibly perform its function again in another plant, as it would be necessary that the DNA sequence actually be introduced in that other plant in order for protection under a European patent to be conferred in relation to that plant. In those circumstances, Monsanto cannot rely on Directive 98/44/EC to prohibit the marketing of soy meal originating from Argentina which contains its biotechnological invention in a residual state. Lastly, the Court stated that the directive precludes a national rule from granting absolute protection to a patented DNA sequence as such, regardless of whether it performs its function in the material containing it. The provisions of the directive providing for a requirement of actual performance of that function constitute exhaustive harmonisation of the matter in the European Union.