Twitter Logo Youtube Circle Icon LinkedIn Icon

Publishing firms

Legal Developments worldwide

From bean to flour

October 2010 - Intellectual Property. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

More articles by this firm.

When soybeans are made into flour, the DNA sequences that make the beans Roundup resistant lose their effect. Therefore, importing the flour to the European Union did not infringe the patent.

Since 1998, the Biotechnology Directive has made biotech inventions patentable in the European Union. But does patent protection also extend to products in which the patented function is no longer active? This question was put before the European Court of Justice in this case.  

A biochemical company held a patent on some DNA sequences which made soybeans resistant to Roundup, a herbicide that was also sold by the company. The patent covered the European Union, but not Argentina. So local farmers there were free to grow the soybeans - and they did.  

The soybeans were ground into flour and then exported to the Netherlands. The patent-holding company had the imports seized and sued for patent infringement in the Netherlands.  

No infringement
The Netherlands court referred the issue to the ECJ. The ECJ established that a biotech patent is infringed only if the material in question contains the patented DNA sequence and the DNA sequence is performing its function in the material. As the soybeans had been processed into flour, the DNA could not work in the same way as it did in soybean. Accordingly, importing and selling the flour in the Netherlands did not constitute infringement under the Biotechnology Directive.   The ECJ's ruling conflicted with previous Netherlands patent law practice. Therefore, the Netherlands court asked if the Netherlands was allowed to maintain its national provisions, which were more favourable to patent holders. The answer was a categorical ‚Äėno' because the Biotechnology Directive is a total harmonisation directive.

Norrbom Vinding notes:

  • that the implications of the ECJ's ruling will be far-reaching because of its precedent value and because it was held that no patent protection of DNA material as such is available in the European Union and that patent protection cannot in any event be extended to include phases where the DNA material is inactive;
  • that the fact that DNA material in itself is non-patentable in the European Union is not surprising given the wording of the Biotechnology Directive, which has always required the function of a DNA sequence to be specified in the patent; and
  • that the ECJ's ruling comes only a few months after a US court set aside a large number of gene-related patents issued in the US. The reason for setting aside the patents was that genetic information cannot be patented because it is naturally occurring. Thus, there seems to be some scepticism in both the European Union and the US towards gene patents. However, the US case is currently on appeal.