Court of Justice follows AG's opinion and limits the scope of DNA patents

We reported previously on Advocate General ("AG") M Paolo Mengozzi's non-binding opinion to the Court of Justice of the European Union (the "Court") in the case of Monsanto v Cefetra (C-428/08). The opinion related to the interpretation of the Biotechnology Directive (98/44/EC) (the "Biotech Directive"). On 6 July 2010, the Court released its judgment in the case. The Court followed the AG's opinion.  There were four questions referred to the Court for a preliminary ruling. The Court's answers are as follows: (1) There is no protection for a DNA sequence as such.  In order to obtain a patent over a DNA sequence, its function must be disclosed.  Protection is therefore limited to the situation where the DNA performs the function for which it is patented. (2) National legislation must apply this purpose-bound protection.  There is no discretion to offer wider protection. (3) The Biotech Directive applies to all patents, including patents that were issued prior to adoption of the Biotech Directive. (4) Articles 27 and 30 of the TRIPS agreement do not affect the interpretation of the Biotech Directive.

The Court's decision reduces the scope of protection given to DNA patents. However, the answers to questions (2) and (3) in particular, increase harmonisation across Europe in this area. This will assist biotechnology companies in devising patenting strategies in Europe and permit the accurate valuation of their patent portfolios.

Lawyers Matthew Royle