Menu Content/Inhalt

THE GENE-GUN CASE (Agracetus/Monsanto)

EP 0301749 Particle-mediated transformation of soybean plants and lines 

EP 301749 B1 19949392

Title: Particle-mediated transformation of soybean plants and lines

Proprietor: Agracetus (Monsanto )

Opposition: DeKalb, Pioneer, Sandoz, Ciba-Geigy, Monsanto, No Patents on Life, ETC Group (RAFI) 

Appeal: Syngenta, ETC Group

Status:  patent revoked by Board of Appeal (case T 1165/03)

Claims: Method for making transgenic soybean plants by bombarding tissue with particles carrying chimeric gene copies; transgenic soybean seed, plant.

This patent was one of the first patents in Europe which covered genetically engineered (ge) plants (soy). It covers plants treated with the a so called "gene-gun" (particle gun).  In 1994 it was granted to US seed company Agracetus.

It was challenged by the NGOs "No Patents on Life" and ETC-Group (formerly RAFI), and also by virtually all of Agracetus' competetors in the seeds industry (DeKalb, Pioneer, Sandoz, Ciba-Geigy and Monsanto), who argued from the point of view of their own economical interests that the patent was far too broad. But when Monsanto bought Agracetus Monsanto withrew its opposition, as did DeKalb when it too was bought by Monsanto.

On 28 August 2003 the EPO upheld the patent in a slightly amended form. Sandoz and Ciba-Geigy's successor Syngenta appealed this decission, as has the NGO ETC Group.

The Board of Appeal revoked the patent (case T 1165/03) on 3rd May 2007.  

The content and history of patent EP 301749

The European patent EP 301749 „Particle-mediated transformation of soybean plants and lines" was granted on 2 March 1994 to the company Agracetus who has also received similar patents for cotton and rice.

Agracetus claims in its patent application to have invented the so-called ‚Gene Gun‘: Gene sequences are applied onto metal particles which are then shot into plant cells. Thus genes are ‚smuggled‘ into cells with crude force. According to the company, several tenthousands of attempts need to be undertaken in order to produce a genetically modified plant in this manner. It is unknown how many gene sequences have been inserted or where exactly they have landed inside the genome of these genetically modified plants. Unexpected effects are the rule with this kind of gene insertion.

According to the patent application, Agracetus only achieved a very limited production of genetically modified soya beans: many test series were necessary to produce merely two plants which contained the gene and grew normally. However, the gene could only be found in a few cells of the plants, but not in others. No tests were undertaken to find out whether the gene can be passed on to the next generation.

Despite the scarce evidence for the technical feasibility of the procedure, Agracetus received an incredibly broad patent. Not only the procedure for genetic modifictaion was patented, but also the application of this procedure to all kinds of plants. Even the seeds themselves were patented.

The companies appealing the patent include Monsanto, DeKalb, Sandoz, Ciba Geigy and Pioneer. The company Monsanto had a special reason for its appeal: In 1996 it introduced genetically modified soya beans into the market that were produced with a very similar procedure to that described by Agracetus in its patent. If the patent was affirmed, then Monsanto would have ended up in directly dependence on Agracetus. Therefore Monsanto as well as all other appealing parties brought forward serious arguments against Agracetus‘ patent: The patent should be withdrawn completely. The described procedure did not present a real invention. Other researchers had developed similar procedures. Additionally, the procedure had not been described in a way that would really enable ist technical realisation. Their own research had shown this.

Other companies are even more outspoken:

The company DeKalb, who mainly works in the maize sector, strongly criticise that the patent is extended beyond the scope of soya beans: „The specification only teaches a method for tranforming soya beans. However claim 24 covers all plants! Therefore claim 24 (...) claims an invention that covers the entire kingdom of transgenic palnts - all families, genuses, species and varieties - based on an specification disclosing only one species, considering the unpredictability of the biotechnological arts and particulary in the field of plant transformation. The plant kingdom is an extremely broad group including organismns as diverse as mosses, fungi, algae, and the gymnosperm and angiosperm representing a vast number of higher plants."

The history of patents reflects the development of international agrochemical and seed companies who have undergone an extreme process of concentration in the last few years. In this period most companies in this field have been bought and already been sold again: Pioneer, the biggest seed company in the world has been taken over by DuPont. Ciba Geigy and Sandoz merged to become Novartis whose seed division has now separated under the name of Syngenta. Monsanto, on the other hand, bought the companies DeKalb and Agracetus

With this acquisition Monsanto was also able to acquire Agracetus'incredibly broad patent. Making sure it would not be in danger of economic dependence through the patent, Monsanto just bought the company Agracetus. Now Monsanto is defending the patent against other companies.

In a hearing of the oppositions against the Agracetus/ Monsanto which took place on 6 May 2003 at the European Patent Office (EPO) in Munich, the oppositions where rejected, but some details in the patent had to be changed.

In a public hearing at the board of appeal at the European Patent Office on 3rd May 2007 the patent was finally revoked. Reasons were that parts of the patent were not really new and others details were not described in a way that the invention could be really repeated by other experts.

Disclaimer: The documents presented here for download are copies of those from the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO). Legally binding are only the originals available from the organizations themselves.

WO...  numbers are world patent applications, at WIPO

EP... numbers are European Patents 

EP...A. numbers are European patent applications 

EP....B1 numbers are European Patents as granted

EP....B2 numbers are patents as granted after the closure of a dispute

Within the juridical structure of the EPO:

Opposition is the First Instance

Appeal is the Second Instance

Enlarged Board of Appeal is the highest court within the EPO, which has the final say.