Agnieszka Matusik

A DNA sequence alone does not merit patent protection

The holder of a patent may not prohibit trade in products containing a patented DNA sequence if the sequence does not perform the function for which it was patented.

This was the holding of the European Court of Justice in its judgment dated 6 July 2010 in Monsanto Technology LLC v. Cefetra BV (Case C-428/08).

Monsanto, a biotechnology company holding a European patent for a DNA sequence, brought an action against companies trading in soy meal produced from soya containing the patented DNA sequence.

The patented DNA sequence codes enzymes that make plants resistant to herbicides, so that plants with the enzymes thrive while the surrounding weeds are killed. Monsanto introduced this DNA sequence into soya, which thus became resistant to the herbicide. This variety of soya is commonly grown in Argentina, and was imported into Europe by the defendant Cefetra in the form of soy meal.

The ECJ upheld the opinion of the advocate general, holding in response to a request for a preliminary ruling from a Dutch court that the patent protection for the DNA sequence is not absolute, but depends on whether in the given product the sequence performs the function for which it was patented.

The function of the patented DNA sequence is to protect living plants from herbicides. The imported soy meal, however, is a dead product which is not exposed to herbicides. Thus the DNA sequence cannot perform its patented function in soy meal.

The ECJ’s interpretation means that patent protection given to a DNA sequence will not automatically be extended to material containing the sequence as a result of processing of the original product. This represents a reasonable restriction on patent protection, balancing the interests of patent holders and the needs of a properly functioning internal market in the European Union.