Under the heat: A field of maize drying in the sun. Clothianidin is registered for seed treatment use on corn and canola, according to the EPA Photo: Petr Kovar

Sumitomo Chemical and its US subsidiary, Valent USA Corporation (Walnut Creek, California), have filed three complaints against Syngenta in the US for alleged patent infringement over Sumitomo's neonicotinoid insecticide, clothianidin. The plaintiffs argue that Syngenta's sales of products containing clothianidin infringe Sumitomo's patent (No 5,034,404), while a later patent issued to Syngenta (No 7,105,469) should be declared invalid. Syngenta believes that the lawsuits are "without merit" and will "vigorously defend" its claims, the company told Agrow.

Sumitomo and Valent have filed claims with the US International Trade Commission (ITC) and the US District Court for Western Wisconsin alleging that Syngenta is violating Sumitomo's basic clothianidin patent (the "404 patent"), which was issued in July 1991. The plaintiffs allege that Syngenta is violating the patent in two ways: by selling products containing clothianidin; and by selling the neonicotinoid insecticide, thiamethoxam, which is partly metabolised to clothianidin. The ITC complaint seeks an exclusion order and a "cease and desist" order to prevent the import and sale by Syngenta and its subsidiaries of products "containing clothianidin and converting into clothianidin after intended use".

A separate complaint over the invalidity of Syngenta's 2006 use patent (the "469 patent) was filed against Syngenta Crop Protection in the US District Court for Northern California. The lawsuit argues that Syngenta is seeking to prevent Sumitomo and Valent from selling clothianidin to control insect pests on genetically modified crops. The "469 patent" claims patent protection for clothianidin on transgenic crops, whereas the earlier "404 patent" covers pest control on plants in general. "The '469 patent is both anticipated and obvious and therefore invalid in light of the prior art," the complaint states.

Bayer CropScience is also involved in the dispute because it has contractual relationships with Syngenta that have been invoked by Bayer to bar Sumitomo and Valent from selling clothianidin to control pests on GM crops, the lawsuit states. Bayer is not named as defendant in the lawsuits, but is said to have been involved in "substantial negotiations" with Sumitomo. "It is both ironic and unfair that Syngenta and Bayer seek to prevent Valent and our parent company, Sumitomo Chemical, from fully marketing clothianidin products in the US, even though Sumitomo Chemical owns the basic patent on this versatile and effective insecticide," says Valent's president and chief operating officer, Trevor Thorley.

While Sumitomo believes that the "469 patent" is invalid, it sought a "reasonable licensing agreement" to avoid costly litigation, the company points out. "However, Sumitomo Chemical's efforts to negotiate with Bayer and Syngenta have been fruitless and futile," it adds.

Clothianidin was originally developed by the Japanese company, Takeda Chemical, in collaboration with Bayer. Takeda introduced the active ingredient in Japan in 2002 (Agrow No 399, p 5), while Bayer received its first European seed treatment approvals in 2003 (Agrow No 424, p 24). Sumitomo took over Takeda's clothianidin business when the Sumitomo Chemical Takeda Agro joint venture was formed in November 2002 (Agrow No 434, p 4). The companies originally formed a 60:40 joint venture, with a view to Sumitomo taking over the business completely in 2007. The acquisition of the "404 patent" was the "crown jewel" of the transaction, the California lawsuit states.

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Sumitomo licensed clothianidin to Arysta LifeScience for soil and foliar uses in the US and Mexico in 2004 (Agrow No 462, p 1). Last year, Valent agreed to take over Arysta's brands in the US crop and ornamental sectors, while both companies would continue to market the insecticide for use on turf (Agrow No 524, p 1). Bayer still markets the insecticide for seed treatment uses under the Poncho brand.

Syngenta received its first US approvals for thiamethoxam in 2000 (Agrow No 367, p 18). The following year, Syngenta settled a long-running lawsuit with Bayer over the discovery of neonicotinoid insecticides (Agrow No 392, p 1). With regard to the latest lawsuits, Syngenta says that it fully respects intellectual property rights and believes that Sumitomo's claims are without merit. "Syngenta has enforced its intellectual property rights and has licensed its technology in compliance with applicable laws," the company told Agrow.

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