Transcript Dialogue Across the 49th Parallel Does US Jurisprudence Influence Canadian Patent Law?

Dialogue Across the 49th Parallel
Does US Jurisprudence Influence
Canadian Patent Law?
Pushing the Envelope
• The scope of patentable subject-matter is
inherently plastic and expansionist.
• While patent law seeks to offer clues and
hints on the parameters for determining
patentable subject-matter, the visionary and
futuristic nature of inventions compels the
need to avoid finite definitions of what is
patentable subject-matter.
• Until 1980, the prevalent legal opinion was
that transgenic life forms were not juridical
inventions.
The US and Canada
• In order to fully appreciate Canadian
jurisprudence on the patentability or lack
thereof of alleged inventions pertaining to life
forms, especially, the Supreme Court decision
in the Harvard Oncomouse, it is best to start
with the US Supreme Court decision in
Diamond v. Chakrabarty.
• The interaction between both cases illustrates
the often awkward dialogue between US and
Canadian jurisprudence on patentability
subject-matter.
Diamond v. Chakrabarty
• The majority decision (5-4) of the US
Supreme court altered the state of the
law on inventions relating to life forms.
• Prior to Diamond v. Chakrabarty,
patents had been issued to processes
utilizing life forms. Patent laws rejected
product patents on life forms.
Diamond’s case was thus the first
product patent for a life form.
Facts of Diamond case
• Anand Chakrabarty, a microbiologist working
for GE filed a patent application, assigned to
General Electric Co. The application asserted
36 claims related to Anand’s invention of “a
bacterium from the genus Pseudomonas
containing therein at least two stable energygenerating plasmids, each of said plasmids
providing a separate hydrocarbon degradative
pathway.”
The Claims
• Anand’s patent claims may be
classified into three categories, viz;
• Process claims for the method of
producing the bacteria,
• Claims for an inoculum comprised of a
carrier material floating on water, such
as straw, and the new bacteria,
• Claims to the new bacteria itself.
The Decision of the USPTO
• The patent examiner allowed the claims
falling into the first two categories but rejected
claims for the bacteria. The decision of the
USPO rested on the grounds that :
• 1. Micro-organisms are products of nature,
and
• 2. As living things they are not patentable
under 35 U.S.C. 101.
• These arguments reflected the generally
accepted position of the law in many
jurisdictions, including Canada.
Appeal to the Board
• Anand/GE appealed to the Patent Office
Board of Appeals. The Board affirmed the
examiner on the second ground.
• Relying on the legislative history of the US
1930 Plant Patent Act, in which the US
Congress extended patent protection to
certain asexually reproduced plants, the
Board concluded that s.101 was not intended
to cover living things such as microorganisms.
Appeal, Contd.,
• On further appeal, the Court of
Customs and Patent Appeals, by a
divided vote, reversed the Appeal
Board (on the authority of its prior
decision In re Bergy (Bergy held that
the fact that micro-organisms…are
alive…is without legal significance for
purposes of patent law). On appeal to
the US Supreme Court, the SC
reasoned thus:
Majority Decision
• Burger, C.J., Stewart, Blackmun, Rehnquist, and
Stevens, JJ concurring held that “in choosing such
expansive terms as ‘manufacture’ or ‘composition of
matter’ …Congress contemplated that the patent laws
should be given wide scope, and the relevant
legislative history also supports a broad construction.”
• The plurality of the court further reasoned that the
application was for a non-naturally occurring
manufacture of composition of matter-a product of
human ingenuity having a distinctive name, character
and use.
• Further, that contrary to the argument of the USPO, the
passage of 1930 Plant Patent Act and the 1970 Plant
Variety Protection Act did not exhaust the definition of
the phrase “composition of matter” or ‘manufacture.”
Majority Decision
• The fact that genetic technology was
unforeseen when Congress enacted 101 does
not require the conclusion that microorganisms cannot qualify as patentable
subject-matter until Congress expressly
authorizes such protection. Moreover, that
arguments against patentability under 101,
based on potential hazards that may
generated by genetic research, should be
addressed to the Congress and the Executive,
not to the judiciary.
The Courts or Legislature?
• “It is, of course, correct that Congress, not the
courts, must define the limits of patentability;
but it is equally true that once Congress has
spoken, it is the province and duty of the
judicial department to say what the law is.
Congress has performed its constitutional role
in defining patentable subject matter in 101;
we perform ours in construing the language
Congress has employed.” Burger, C.J.
The Minority Decision
• Speaking for the minority, Brennan J., (joined by White,
Marshall, and Powell, JJ.,) conceded that the process
patent was not in issue. However, in their opinion “the
only question we need decide is whether
Congress….intended inventors to secure a monopoly
on the living organism itself, no matter how produced or
how used. Because I believe the Court has misread the
applicable legislation, I dissent.’
• “…Given the complexity and legislative nature of this
delicate task, we must be careful to extend patent
protection no further than Congress has provided. In
particular, were there an absence of legislative
direction, the courts should leave to Congress the
decisions whether and how far to extend the patent
privilege into areas where the common understanding
has been that patents are not available.”
The Minority, contd.,
• “In this case, however, we do not confront a
legislative vacuum…in 1930 Congress
enacted the Plant Patent Act…in 1970
Congress enacted the Plant Variety Protection
Act…Thus, we are not dealing-as the court
would have it-the routine problems of
“unanticipated inventions.”
• In these two Acts Congress has addressed
the general problem of patenting animate
inventions and has chosen carefully limited
language granting protection to some kinds of
discoveries, but specifically excluding others.”
Minority Decision, contd.,
•
•
“If newly developed living organisms not naturally occurring
had been patentable under 101, the plants included in the
scope of the 1930 and 1970 Acts could have been patented
without new legislation. Although the court rejects this line of
argument, it does not explain why the Acts were necessary
unless to correct a pre-existing situation. I cannot share the
Court’s implicit assumption that Congress was engaged in
either idle exercises or mere correction of the public record
when it enacted the 1930 and 1970 Acts.”
“Congress, assuming that animate objects as to which it had
not specifically legislated could not be patented, excluded
bacteria from the set of patentable organisms. The Court
protests that its holding today is dictated by the broad
language of 101. But, the Court’s decision does not follow the
unavoidable implications of the statute. It is the role of
Congress, not this Court, to broaden or narrow the reach of
the patent laws. This is is especially true where, as here, the
composition uniquely implicates matters of public concern”
Chakrabarty Comes to Canada
• In Abitibi, the Appeal Board was confronted with the
question of whether a somewhat ‘higher’ life form, viz, a
mixed fungal yeast culture is a patentable invention.
The alleged invention was for a process of
biodegrading spent sulfite waste liquor from the
manufacture of wood-pulp. While the process claims
were allowed, the claims for the mixed fungal yeast
were disallowed on the grounds that s.2 did not
contemplate living matter as patentable subject matter.
• Relying heavily on the Chakrabarty decision, the
patentee appealed to the Patent Appeal Board. In a
rather questionable application of Chakrabarty, the
Board allowed the appeal and held that the
acclimatized microbial culture was an invention within
the meaning of s. 2.
Chakrabarty in Canada
•
•
•
5 years after the Patent Board’s decision in Abitibi, the
Federal Court had the opportunity to wade into the
controversy of patents on life forms.
In the Pioneer Hi-Bred case, the applicant sought to patent a
new variety of soybean derived from artificial cross-breeding,
but cultivated naturally. The new product did not previously
exist in nature since soybean reproductive organs are
contained in the same flower and are ordinarily protected
against external intrusion. Hence, artificial human intervention
was necessary to create a hybrid.
The patent Office Examiner rejected the application on the
basis that new plant varieties do not come within meaning of
“invention” as defined in s. 2 of the Act. On appeal, the
decision was upheld on the additional ground that it was
impossible for such “inventions” to comply with s. 27(3) on the
requirement for full, detailed and complete disclosure.
Chakrabarty in Hi-Bred
• In the opinion of Marceau, J. the new plant variety was
not an invention because Parliament seemed to have
excluded plants from patentability by creating a specific
legislation for it.
• Interestingly, the fuller reasoning of Marceau J reads
like the minority view of the US Supreme Court in
Diamond v. Chakrabarty.
• On his part, Pratte, J. concurred with Marceau but
reasoned that he would reject the patentability of the
new soybean variety on the grounds that the alleged
invention could not be described as required by s. 27
(3) of the Act. In the absence of a statutory basis for
depositing cultures, he was unable to accept that such
practice is coeval with the written disclosure as
required under s. 27 (3).
Hi-Bred at the SC
• At the Supreme Court, Lamer, C.J, per
curiam, distinguished hybridization from
transgenic intervention but anchored his
decision on the incompatibility of the alleged
invention with s. 27 (3) on disclosure. Arguing
that the Court lacked the “right to stretch the
scope of patent protection beyond the limits of
existing legislation” on deposits in lieu of
disclosures, the court unanimously dismissed
the appeal.
Chakrabarty Comes of Age
•
•
•
Following the decision in Diamond v. Chakrabarty, there was
some initial confusion in both the USPTO and court as to the
patentability of transgenic multi-cellular life forms. This
confusion was cleared by a Guideline dated April 7, 1987 by
USPTO announcing that it considered “non-naturally
occurring non-human multi-cellular living organisms, including
animals to be patentable subject-matter within the scope of
35 U.S.C. 101.
A year later, Harvard College was granted a patent for a
genetically-engineered animal valuable in cancer research.
The claim actually encompasses all non-human mammals
altered in the same manner.
The patent elicited frenzied opposition from animal rights
advocates, and other people ostensibly troubled by the
“ethical” consequences of transgenic research and extension
of property rights over animals and “complex” life forms.
The Mouse Comes to Canada
• Since 1992, more than 2000 patent
applications in respect of geneticallyaltered animals have been filed in the
US and more than 300 such patents
have been issued.
• In Canada, the Harvard claims were
rejected by the Patent Office, the
Appeal Board, and Federal Court, in
respect of the oncomouse but the
process patents were issued.
The Mouse in Canada
• On appeal to the Federal Court (Appeals),
Rothstein and Linden, JJ.A. reasoned (along
the lines of the majority in Chakrabarty) that
the oncomouse is unobvious, new and useful
composition of matter and hence, an
invention. Having reasoned thus, the question
of whether the oncomouse was a manufacture
became moot. The only question left was
whether it fit the category of patentable
subject matter.
déjà vu?
• At the Supreme Court, a plurality of the court
(L’Heurex-Dube, Gonthier, Gonthier, Iaccobucci,
Bastarache, and LeBel), agreeing with the reasoning of
the minority in Chakrabarty held that a higher life form
is neither a manufacture nor a composition of matter.
• For a fuller detail of the reasoning of the court, see
Justices Iacobucci and Binnie, respectively. Perhaps,
the most striking thing about the majority decision is
that in many respects, it reads like a verbatim
reproduction of the reasoning of the minority in the US
case of Diamond v. Chaktrabarty
The Awkward Dialogue
• The short point here is that the apex courts of
industrialized states often “talk to one another”
in patent law.
• Whether this can be construed as a form of
informative and constructive dialogue is a
question that often elicits elusive answers.
• How this dialogue will play out in the
aftermath of the Bilski case is a subject of
interest to patent lawyers and Canadian
inventors.