Accounting of Profits to Remedy Biotechnology Patent Infringement

A number of important agricultural biotechnology patent disputes have arisen in Canada since the 2004 Supreme Court of Canada decision in Monsanto v. Schmeiser. Typically, defendants no longer contest issues of patent validity or infringement. Instead, the controversies have shifted to discussions about applicable remedies for infringement.

Mid-season Soybean Field

Mid-season Soybean Field, by United Soybean Board, on flikr.

The companion cases of Rivett v Monsanto and Janssens v Monsanto are two key decisions concerning agricultural biotechnology, specifically Monsanto’s patented Roundup Ready plans (in these cases, soybeans). Before these, the Schmeiser case had ostensibly marked a fundamental change in the appropriate method for conducting an accounting of the profits that a defendant infringer must disgorge to a plaintiff patentee.

The remedy of accounting of profits in patent cases, however, remains mired in definitional and conceptual confusion. The lack of clarity and certainty is harmful to all stakeholders in the patent system.

This article, “Accounting of Profits to Remedy Biotechnology Patent Infringement,” co-authored with farming law expert and uOttawa alumnus Kurtis Andrews, makes three key contributions in the field of agricultural biotechnology patents.

First, it exposes a largely unrecognized problem pertaining to the legal remedy of accounting of profits for patent infringement. To address this problem, the article corrects misunderstandings about recent court decisions pertaining to the accounting of profits remedy.

Second, the article critically examines the discourse used to discuss accounting of profits, which includes sometimes inconsistent concepts, terms, and definitions. This article proposes strategies to facilitate definitional and conceptual coherence in order to establish a framework for future jurisprudence and scholarship on this topic.

Finally, the article provides insights into the unsustainability of current trends in this area of law.

I also published a much¬†shorter piece, foreshadowing this article, in The Lawyer’s Weekly, which you can read right here.