Property Law - Patents - Agricultural products - Genetically modified plants - Respondents invent and patent a genetic insert into genes of canola plant that produces a plant resistant to glyphosate herbicide - Genetically modified crop sold to licensed growers and controls placed on licensees’ harvesting and use of seed - Farmer discovers genetically modified canola growing on his field - Farmer not a licensed grower - Transfer of genetically modified canola to farmer’s fields occurs without farmer’s participation or knowledge - Whether subject matter claimed in Patent 1,313, 830 lies outside the Patent Act - If not, should the patent be given a narrower scope - If not, should farmer ge granted an implied license to continue to save and re-use seed that may contain the patented gene absent exploitation - If not, should Monsanto have been awarded the entire profit from farmer’s 1998 canola when he did not benefit or profit from the infringement.
The Respondents are the owner and licensee respectively of Canadian patent number 1,313,830, entitled “Glyphosate-Resistant Plants”, issued on February 23, 1993 and expiring on February 23, 2010. Since 1996, canola seed containing the inserted gene has been produced in Canada under license from the Respondents and marketed to farmers under the trade name “Roundup Ready Canola”, reflecting its resistance to the glyphosate based herbicide “Roundup” manufactured by the Respondents. A farmer who wishes to grow Roundup Ready Canola must enter into a licensing agreement called a Technology Use Agreement (TUA). The Appellant Percy Schmeiser has been farming in Saskatchewan for approximately 50 years and has grown canola since the 1950’s. Schmeiser Enterprises Ltd. is a corporation of which he and his wife are the only shareholders and directors, and to which Mr. Schmeiser assigned his farming business in 1996. His last purchase of canola seed before trial was in 1993. The uncontradicted evidence of Mr. Schmeiser was that he has never purchased Roundup Ready Canola and has never signed a TUA relating to Roundup Ready Canola.
In 1996, there were five growers in the area who grew Roundup Ready Canola under license. One grew Roundup Ready Canola on a field diagonally adjacent to one of Mr. Schmeiser’s fields of canola. In late June or early July of 1997, Mr. Schmeiser and his employee Carlyle Moritz hand sprayed Roundup as a normal weed control practice around power poles and in the ditches along the roadway bordering four of Mr. Schmeiser’s fields. Several days later, a large number of canola plants had survived and Mr. Schmeiser conducted a field test on three acres. Approximately 60% of the canola plants survived in clumps, thickest near the road and thinner as one moved into the field.
Experts for the parties conducted a number of tests on the canola plants growing beside the subject field in 1997, some seeds from those plants, canola plants growing in all the Schmeiser fields in 1998, and samples of seed retained by the mill that mixed Schmeiser Enterprises Ltd.’s seed in the spring of 1998. The tests indicated the presence of the patented gene. The trial Judge found that certain claims of the patent had been infringed and he granted the Respondents an injunction, an order for delivery up and an award of damages against Schmeiser Enterprises Ltd. in the amount of $19,832, representing the trial judge’s accounting of profits. The Appellants appealed and the Respondents cross-appealed, eventually limiting their cross-appeal to a claim that the award of damages was too low. The Court of Appeal dismissed the appeal and the cross-appeal.
- Origin of the case: Federal Court of Appeal
- File No.: 29437
- Judgment of the Court of Appeal: September 4, 2002
- Counsel:
- Terry J. Zakreski for the Appellants
- Roger T. Hughes Q.C. for the Respondents
