Life Forms Protectable as Subjects of U.S. Patentsmicrobes to Animals (Perhaps)

Abstract

Scientists, businessmen, universities and industries with fundamental or peripheral interests in technology as applied to life processes will be keenly interested in recent U.S. Patent Office decisions. These decisions indicate that new higher life forms, animal or plant, are proper subjects of patents if they are not naturally occurring (and are not human in the case of animals).

In contrast to plants and other organisms, genetically modified animals have had no mode of protection as intellectual property except possibly as a trade secret or utility patent. The Ex parte Allen decision, reached by the Patent Office Board of Appeals and Interferences, directly addressed the issue of animal patentability in view of the broad reading of 35 U.S.C. $ 101 by the U.S. Supreme Court in the Chakrabarty decision. The subject invention concerned polyploid oysters. Claims directed toward polyploid oysters produced by a particular process were rejected under 35 U.S.C. $ 103 and $ 101. The Board, reversing the 35 U.S.C. $ 101 - based rejection in view of the Chakrabarty decision, indicated that the claimed polyploid oysters were nonnaturally occurring manufactures or compositions of matter within the confines of patentable subject matter under 35 U.S.C. $ 101.

A similar decision affecting the patentable status of plants or segments thereof had previously been reached by the Patent and Trademark Office in the case of Ex parte Hibberd, 227 U.S.P.Q. 443 (Bd. Pat. App. 1985). The Hibberd utility patent application concerned “genetically engineered” maize which had high levels of the tryptophan.