## Facts

- Monsanto held a patent claiming chimeric genes conferring glyphosate-herbicide tolerance and cells containing those genes; canola containing them was marketed as “Roundup Ready Canola.”
- Monsanto licensed use of the technology to farmers in exchange for purchase restrictions and a per-acre technology fee.
- Percy Schmeiser, a Saskatchewan canola farmer, did not buy licensed seed and did not obtain a licence from Monsanto.
- Testing in 1998 showed 95–98% of Schmeiser’s canola acreage contained the patented herbicide-tolerant trait.
- The origin of the resistant plants was uncertain, but after discovering resistant plants Schmeiser collected, saved, and replanted the seeds, cultivated a crop composed mostly of resistant plants, and sold the harvested canola.
- The Federal Court found the patent valid and found infringement based on saving, planting, growing, and selling plants containing the patented gene and cell; the Federal Court of Appeal affirmed.

## Issues

1. Whether claims to genes and cells impermissibly extended patent protection to higher life forms (plants and seeds) that are not patentable.
2. Whether saving, planting, cultivating, and selling plants containing the patented gene and cell constituted “use” of the invention under Patent Act s. 42.
3. Whether a successful patentee was entitled to an accounting of profits where the defendant did not obtain economic advantage from the herbicide-tolerant trait.

## Decision

- The Supreme Court of Canada largely affirmed: the patent was valid and Schmeiser infringed, but Monsanto was denied an accounting of profits.
- The majority held the patent properly covered genes and cells, not plants as such; nonetheless, exclusive rights can be infringed through use of plants containing the patented genes and cells.
- The majority held Schmeiser “used” the invention by knowingly cultivating and commercially dealing in canola whose cells contained the patented gene on a large scale, regardless of whether he sprayed glyphosate to exploit the trait’s full benefit.
- The majority distinguished accidental or “blow-by” presence from deliberate, subsequent commercial use; liability turned on Schmeiser’s collection, saving, replanting, and commercialization after he knew or ought to have known the crop was predominantly resistant.
- On remedies, the majority held an accounting requires profits causally attributable to the invention; because Schmeiser obtained no differential profit compared to ordinary canola, Monsanto recovered no profits (though declaratory and injunctive relief remained available).
- The dissent would have found no infringement, reasoning Schmeiser did not commercially exploit the patented gene and cell as an invention (he neither changed farming practices nor took advantage of herbicide tolerance), and warning against construction that effectively controls plants and seed-saving.

## Legal Principles

- A patent claiming a component (here, genes and cells) is not invalid merely because that component is found within a broader unpatented organism; infringement can occur when the patented invention forms part of a larger unpatented thing.
- “Use” of a patented invention may be established by possession, cultivation, and commercial dealing in organisms containing the patented component, where the defendant knowingly exploits the presence of the patented invention, even without employing every functional advantage of the trait.
- Patent liability does not depend on whether the patented trait was actively deployed (e.g., spraying the corresponding herbicide) if the defendant deliberately propagates and commercializes the patented invention embodied in the crop.
- Accounting of profits is limited to profits attributable to the invention; where the infringer earns no incremental or differential profit from the patented advantage, disgorgement is unavailable.

## Conclusion

The court held that a patent on herbicide-tolerant genes and cells can be infringed by deliberate cultivation and sale of plants containing them, while limiting monetary recovery to profits actually attributable to the patented trait.


Monsanto Can. Inc. v. Schmeiser, [2004] 1 S.C.R. 902 (Can. 2004)