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Board Decision on Animal Patents Sparks Debate

WASHINGTON—A U.S. patent board ruling last month significantly boosts the odds for approval of some of the pending applications for patents on genetically engineered animals. The U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences, while rejecting for other reasons an application for a patent on an oyster, ruled that there is no legal reason why such patent protection should be denied. The decision may lead eventually to the marketing of new breeds of faster-growin

By | May 4, 1987

WASHINGTON—A U.S. patent board ruling last month significantly boosts the odds for approval of some of the pending applications for patents on genetically engineered animals.

The U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences, while rejecting for other reasons an application for a patent on an oyster, ruled that there is no legal reason why such patent protection should be denied.

The decision may lead eventually to the marketing of new breeds of faster-growing poultry or leaner livestock, for example, and to laboratory animals susceptible to human diseases or otherwise tailored for research. Meanwhile, its moral and ethical implications are sure to spark heated debate.

U.S. patent protection was limited to inanimate objects until 1980, when the Supreme Court ruled in Diamond v. Chakrabarty that genetically altered bacteria developed by microbiologist Ananda Chakrabarty fell within the scope of patent law. In 1985 the Board of Patent Appeals decided that plants, granted similar protection under separate statute, also were patentable. But patent examiners have continued to reject applications for animal patents.

In its recent ruling, the appeals board decided that such an exclusion no longer is justified in light of the Chakrabarty decision. "The issue, in our view, in determining whether the claimed subject matter is patentable under Section 101 is simply whether that subject matter is made by man," the board stated.

The board went on to reject the application, which involved a Pacific oyster with an extra set of chromosomes that is said by its inventor to be edible year-round. Patent law requires patentable inventions to be novel and not an obvious development to others in the field; the applicant failed to meet that standard, the board ruled, because similar results have been achieved with the American oyster. The first patent approval for an animal may not be far off, however. Charles Van Horn, director of the Patent Office's group of biotechnology patent examiners, said 15 of the 5,800 patent applications being considered by his section involve multicellular animals.

Reproducible Widgets

Embryogen Inc. is one of the companies with an animal patent application pending, according to Steven Holtzman, vice president of the Athens, Ohio, company, which provides custom-designed transgenic laboratory animals (primarily mice and rabbits) to researchers. Strong patent protection is "doubly important" in the case of animals, Holtzman said, noting that, "unlike widgets, they are able to reproduce themselves." Patent protection on the process for producing the first such animal, he added, would not necessarily be extended to subsequent generations. While Holtzman would not disclose the nature of Embryogen's application, he said genetically engineered animals can play an important role in combating disease. "Imagine the value to medical research," he said, "if a mouse could be made susceptible to the human AIDS virus, for example."

Biotech industry spokesmen also welcomed the board's decision. "ABC has strongly taken the position in the United States and elsewhere that animals should be patentable," said Iver Cooper, patent counsel for the Association of Biotechnology Companies. "We didn't feel that [after the Chakrabarty decision] the Patent Office had any legal basis for holding otherwise."

Not all the reaction has been favorable, however. "I think the whole question of patenting animals is abhorrent to most people in this culture, regardless of their religious affiliation," said Jeremy Rifkin of the Foundation on Economic Trends. Rifidn said his group plans to fight the decision in the courts and will join religious, environmental and animal rights groups in lobbying Congress for new legislation.

"I think [the decision] will come back to haunt us," Rifkin said. "I don't think we'll be able to put a moat around human beings."

Van Horn emphasized that the board's decision is limited to nonhuman animals, since the patenting of human beings raises "constitutional problems." He acknowledged that the line might be difficult to draw at the human cellular level, but said that "for the most part, one could probably claim adequate protection without getting into that kind of issue."

Greene is on the staff of The Scientist.

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