EPLAW Patent Blog

EU - The Court of Justice limits DNA protection to performing its function

The Court of Justice limits DNA protection to performing its function, by Paul England, Simmons & Simmons

The decision of the Court of Justice
In its first decision on the infringement provisions of the Biotechnology Directive, the Court of Justice (CJ) (formerly the European Court of Justice) gave its judgment in the case of Monsanto Technology v Cefetra on 6th July 2010. It has followed the earlier Opinion of Advocate General Mengozzi (9 March 2010) by holding that Article 9 of Directive 98/44/EC does not confer protection on a patented DNA sequence when it is contained in soy meal, where it does not perform the function for which it was patented. This is regardless of the fact that it did perform that function previously in the soy plant, of which the meal is a processed product, and that the DNA could again perform its function after extraction from the soy meal and insertion into the cell of a living organism.

ECJ - Monsanto v. Cefetra and others

Monsanto Technology LLC v. Cefetra BV, Cefetra Feed Service BV, Cefetra Futures BV, Alfred C. Toepfer International GmbH, Intervener in support of the defendant: Argentine State, Judgment of the Court (Grand Chamber), 6 July 2010, Case C 428/08, with thanks to John Allen and Paul van Dongen, NautaDutilh

On those grounds, the Court (Grand Chamber) hereby rules:

1.   Article 9 of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions is to be interpreted as not conferring patent right protection in circumstances such as those of the case in the main proceedings, in which the patented product is contained in the soy meal, where it does not perform the function for which it is patented, but did perform that function previously in the soy plant, of which the meal is a processed product, or would possibly again be able to perform that function after it had been extracted from the soy meal and inserted into the cell of a living organism.

2.   Article 9 of the Directive effects an exhaustive harmonisation of the protection it confers, with the result that it precludes the national patent legislation from offering absolute protection to the patented product as such, regardless of whether it performs its function in the material containing it.

NL - Monsanto v. Cefetra and others / settled

Monsanto Technology LLC v. Cefetra B.V., Cefetra Feed Service B.V., Cefetra Futures B.V. and v. The State of Argentina and Miquel Santiago Campos (secretary of state agriculture) and Monsanto Technology LLC v. Vopak Agencies Rotterdam B.V. and Alfred C. Toepfer International GmbH, Docket Decision, The Hague District Court, The Netherlands, 23 June 2010, Case No. HA ZA 05-2885 and HA ZA 06-2576

Docket decision, showing that Monsanto withdraws both cases (the parties settled). Argentina objected and wished to continue the proceedings. According to the court this is not possible as Argentina has not independently filed a claim and as there are no claims filed against Argentina. All that remains is the decision regarding costs.

Read the decision (in Dutch) here.

Head note: provisional

EU - Comments on the opinion of Advocate General Mengozzi in case C-428/08 (Monsanto Technology LLC v. Cefetra BV and others)

Comments on the opinion of Advocate General Mengozzi in case C-428/08 (Monsanto Technology LLC v. Cefetra BV and others), by Willem Hoyng and Frank Eijsvogels, Howrey

On 9 December 2010, Advocate General Mengozzi delivered his opinion in the matter of Monsanto v. Cefetra c.s.. In this paper we will first give an overview of the relevant facts. Subsequently we will make a few comments on this opinion whereby we focus on the proposed answers to the first two questions that the District Court of The Hague referred to the European Court of Justice (ECJ). 

Read the entire comment here.

EU - Monsanto v Cefetra

Monsanto Technology LLC v. Cefetra BV and others, Opinion of Advocate General Mengozzi, Court of Justice of the EU, 9 March 2010, Case No. C-428/08, with thanks to John Allen and Paul van Dongen, NautaDutilh

Today, Advocate General Mengozzi of the Court of Justice of the EU has rendered his opinion in the much debated Monsanto v. Cefetra case. The press release states:

"After examining the wording and aims of the directive on the legal protection of biotechnological inventions, Advocate General Mengozzi maintains that the patented DNA is protected as such -that is, as a chemical substance- only where it performs the function for which it was patented. In his view, those are the only circumstances in which the protection also covers the 'material' in which the DNA sequence is contained.

"The Advocate General concludes, therefore, that the protection for a patent relating to a DNA sequence is limited to the situations in which the genetic information is currently performing the functions described in the patent. That holds true both as regards the protection of the genetic information as such and as regards the protection of the materials in which the genetic information is contained.

EPO - T0018/09 - Cooperation between Board of Appeal and National Court / acceleration of appeal proceedings

Human Genome Sciences (patentee) v. Eli Lilly (opponent), Cooperation between Board of Appeal and National Court / Acceleration of appeal proceedings, EPO Board of Appeal, 21 October 2009, Case No. T0018/09

In this case, the UK Court of Appeals requested the Board of Appeal to accelerate the parallel EPO appeal proceedings in order to have that appeal decided prior to the UK appeal hearing (which was then scheduled for December 2009, see Eli Lilly and Company v. Human Genome Sciences, Inc. [2008] EWCA Civ 168).

The Board acknowledged the practical and economic benefit of the national court's request and stated that it agrees entirely with the national appeal court that parties to such parallel proceedings should inform both tribunals of the position as early as possible and ask the appropriate tribunal for acceleration in order to avoid duplication of proceedings. Whether acceleration is requested by one party, or both or all parties in agreement, or by a national court, all parties must accept a strict procedural framework including short time limits. It must also be understood that acceleration can have no effect on the equal treatment of all parties and cannot confer any advantage on any one party.

DE - Referral ECJ re 'Biotech Directive'

German Federal Supreme Court refers questions regarding the interpretation of the EC “Biotech Directive” (Directive 98/44/EC) to the European Court of Justice – patenting embryonic stem cells, by Tilman Mueller-Stoy and Thomas Friede, Bardehle & Pagenberg 

On November 12, 2009, the German Federal Supreme Court indicated that in the Brüstle ./. Greenpeace Case, Docket No. Xa ZR 58/07, questions on the interpretation of the exclusion clause that a patent shall not be granted on the use of human embryos for industrial or commercial purposes be referred to the European Court of Justice. Said provision was implemented into the German patent act on the basis of Article 6 of the Directive 98/44/EC on the legal protection of biotechnological inventions.

Read the complete post here.

Read the press release of the German Federal Supreme Court here.