Patent Exhaustion for Self-Replicating Articles

Womble Carlyle Sandridge & Rice, PLLC

Tony Dutra’s article in Bloomberg BNA, “Supreme Court Hears Arguments on Patent Exhaustion for Self-Replicating Articles”, alerts us to some fascinating issues.  Mr. Dutra summarizes, “Self-replicating seeds set the stage for a conflict at the Supreme Court between two broad patent policies – the right of the patentee to prevent unauthorized making of patented articles and the right of a purchaser of a patented article to be free of restrictions on its downstream sale or use.”  Why are these policies apparently in conflict?  Well, seeds are self-replicating.  A genetically modified seed, patented by Monsanto Co., is capable of being planted and producing more seeds which contain the same genetic modification.  So, if a farmer plants these genetically modified seeds and the plants then produce more seeds, are the new seeds a “newly infringing article”?  Does the doctrine of patent exhaustion apply to the first sale of the seed, in which case a purchaser of the seed is free to use the seed as he sees fit?  Might a judicial exception be needed in the case of self-replicating articles?  Mr. Dutra reports that the justices heard arguments comparing aspects of the case to Microsoft’s “golden master” disk, which was used to install Windows onto foreign-assembled computers.  According to Mr. Dutra, the court said “the individual copies would be infringing if made in the United States”, although such was not applicable to the specifics at the time.  What intrigues me is the possibility that a ruling on this might be applicable to self-replicating structures in nanotechnology, to robotics that manufacture other robots, to 3-D printing machines, and to computers and databases.

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