The U.S. Court of Customs and Patent Appeals has reaffirmed its earlier ruling that a corporation has the right to patent new forms of life created in its own laboratory.
In a 4-to-1 decision this week, the court said it did not see "any sound reason" for making a distinction between the living and the nonliving when it came to issuing patents.
The appeals tribunal ruled a year ago that a new life form created in the labs of General Electric could be patented by the company. But the Supreme Court vacated the ruling last June and returned the case to the appeals court for reconsideration in light of the high court's ruling in an earlier patent case.
The Supreme Court had ruled last spring that an inventor cannot patent something when a mathematical formula is the only novel feature involved since such formulas do not fall under the definition of patentable items, which, stated broadly, includes any known or new use of a known "process, machine, manufacture or composition of matter."
It was that decision, and the high court's discussion in it of what is and isn't a patentable item, that the appeals court was ordered to consider when ruling again in the General Electric case.
The appeals court yesterday reaffirmed its decision in the General Electric case and in an earlier case involving a similar patent application by the Upjohn Co.
The decision is the first specifically authorizing a patent for a life form created by what is known as "genetic engineering," and it represents a potential gold mine for corporations involved in genetic engineering research.
What GE sought to patent was a special kind of bacterium that eats oil more voraciously than bacteria found in nature. The bacteria was created in GE's laboratories.
Patent officials had refused to grant GE protection for the new bacterium claiming that Congress never intended "live organisms" to be patentable. In its brief to the court, the Patent Office said that since "the number of living things is vast," allowing one to be patented would open "an enormous range" and would further complicate the policy problems of genetic engineering.
But the appeals court claimed the patent office has regularly been issuing patents on non-process inventions involving "life itself." The court's majority noted, for instance, there was little difference between the cases before it and the successful patent application by Louis Pasteur in 1837 for yeast-a living organism.
As to the charge that the court is opening a Pandora's box, the judges said:
"From our modest exposure to the realities of the patent system, we judge the range of subject matter open to patentability to be enormous in any case. It is heartening to think how many useful things may yet be invented and we are not moved to be restrictive in our interpretation . . . by mere number. An appropriate rejoinder we think is, 'The more the better.'
The court also stated that GE's bacterium falls within the bounds of legislative intent of the patent law. "We look at the facts and see things that do not exist in nature and that are man made, clearly fitting into the plain terms 'manufacture' and 'compositions of matter.'
Spokesmen for General Electric and Upjohn had little comment on the case, saying only that nothing had changed since the appeals court's initial ruling last year. They said the patent office was expected to appeal the case.
Lawyers for the patent and trade-mark office said it was "much too soon" to decide whether they would appeal the latest ruling back to the Supreme Court.