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Holman, Christopher M. --- "Gene Patents Under Fire: Weighing the Costs and Benefits" [2011] ELECD 980; in Arezzo, Emanuela; Ghidini, Gustavo (eds), "Biotechnology and Software Patent Law" (Edward Elgar Publishing, 2011)

Book Title: Biotechnology and Software Patent Law

Editor(s): Arezzo, Emanuela; Ghidini, Gustavo

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781849800402

Section: Chapter 10

Section Title: Gene Patents Under Fire: Weighing the Costs and Benefits

Author(s): Holman, Christopher M.

Number of pages: 28

Extract:

10. Gene patents under fire: weighing
the costs and benefits
Christopher M. Holman

INTRODUCTION

In 1980, the US Supreme Court helped jumpstart a fledgling biotech-
nology industry with its landmark decision in the case of Diamond v.
Chakrabarty.1 At issue was the `patent eligibility' of a non-naturally
occurring, genetically engineered micro-organism.2 Dr. Chakrabarty's
invention was a bacterium he had modified in the laboratory by the intro-
duction of genetic material encoding enzymes capable of metabolizing
crude oil, thereby (in principle) conferring upon the bacterium the ability
to break down an oil spill.3 The United States Patent and Trademark
Office (PTO) had rejected a claim directed towards the bacterium, assert-
ing that a living organism is not patent eligible, notwithstanding the
fact that the organism is `man-made' and satisfies all the other statu-
tory requirements of patentability, such as novelty, nonobviousness and
practical utility.
In a close 5­4 decision, the Court decided in favor of a patent eligibil-
ity not only for Dr. Chakrabarty's genetically engineered bacterium, but
by implication generally for genetically engineered organisms and other
products of biotechnology created using naturally occurring biological


1 Diamond v. Chakrabarty, [1980] USSC 119; 447 U.S. 303 (1980).
2 35 USC 101 is the source of the so-called `patent eligibility' doctrine, which
requires a patent claim to encompass only subject matter that is `patent eligible'.
It is a threshold requirement of patentability; a patent claim is invalid if it covers
subject matter that is patent ...