Monday, October 29, 2007 — IP WARS, PHARMA, BIOTECH & CHEM IP STRATEGY, GLOBAL IP STRATEGY

Monsanto's costly patent strategy mistake

by Duncan Bucknell

As mentioned in the 19 October Global Week in Review, Monsanto's recent failure to enforce its controversial Round Up Ready GMO patent provides a perfect illustrator of a lost lifecycle management opportunity.

The patent was held valid but not infringed in the suit against Cargill decided in the UK Patents Court on 10 October 2007.

All of the claims of the patent (EP0546090) pressed by Monsanto were restricted to either isolated DNA or a method for producing a genetically transformed plant. However, the alleged infringing material was soybean meal created after further processing of plants which were several generations beyond the original transformed plant. The imported goods bore little resemblance and were certainly not the direct result of the patented process.

No infringement, game over, thanks for playing.

What should Monsanto have done?

Here's one simple suggestion - what would you add?

File a further patent disclosing and claiming processes to produce the commercial products which would arise from the new technology. Some might suggest that this could have been added to the original patent specification. This is true but there is probably further work to be done to support the second application which should therefore obtain separate protection, and the consequent extension to the monopoly period. If you're concerned about the disclosure in the earlier application - fine - just adjust the timing of the first filing for the second patent. Oh, and draft the thing carefully.

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