For the second time in less than two years, the Supreme Court has been asked to rule on the role of patent laws in the vast industrial and economic frontiers of genetic engineering.
The precise question to be decided by the justices is perceived differently by the government and by each of its two adversaries in the case, General Electric Co. and Upjohn Co.
The principal law at issue, known as section 101, allow a patent to be obtained by "whoever invents or discovers anynew and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . . ."
A GE scientist, Ananda M. Chakrabarty, assigned to the company the invention of a microorganism or bacterium "engineered to solve one of man's practical needs -- getting rid of oil spills."
For GE, the question to be decided is: "Whether patent claims to a concededly novel and unobvious microorganism, useful in treatment of oil spills, should be denied, solely because the microorganism is alive."
At Upjohn, researcher Malcolm E. Bergey assigned to the Kalamazoo, Mich., pharmaceutical manufacturer his invention. It was, Upjohn says, "a man-made, biologically pure cuture of a novel microorganism" used to make an antibiotic called lincomycin.
For Upjohn, the issue had been identified by the U.S. Court of Customs and Patent Appeals last March, when it ruled, 4 to 1, that the inventions of both companies' scientists were patentable.
As phrased for the majority by Judge Giles S. Rich, the issue as it affects Upjohn is whether Bergey's invention is "excluded from the terms 'manufacture' and 'composition of matter' in . . . 101 because the microorganism is alive?"
Upjohn and GE, of course, want the Supreme Court to let Rich's ruling stand, while Lutrelle F. Parker, acting commissioner of patents and trademarks, wants the justices to review and ultimately to overturn it.
The case dates to October 1977, when the Court of Customs and Patent Appeals, in its first decision in the Upjohn case, ruled for the first time that living things can be patented. Later, the court relied on the Upjohn ruling to support GE.
In April 1978, the Justice Department petitioned for review of the Upjohn ruling. Two months later, however, the Supreme Court denied the petition, but nullified the ruling and sent it back to the patent tribunal for further consideration "in light of" a case decided only four days earlier.
At the end of a footnote in that case, Parker vs. Flook, the court said, "Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under (section) 101."
The relevance of Flook -- involving a mathematical formula -- to the patentability of new forms of life is murky, partly because the opinion speaks of a need for the courts to "proceed cautiously when . . asked to extend patent rights into areas wholly unforeseen by Congress."
But Judge Rich, in his opinion last March in what by then was a consolidated Upjohn and GE case, found the "light" of Flook to be exceedingly dim, because microorganisms -- not an improved method of calculation -- were involved. In fact, Rich wrote caustically, "the Flook holding appears to have no bearing," and the light it sheds is "none."
With that, the court turned to the plain language of Section 101 and found that it does not distinguish between the patentability of living and of inanimate matter.
In the petition for Supreme Court review, Solicitor General McCree charged that the patent tribunal, by holding that living things can be patented, ahd "significantly extended the coverage of the patent laws without legislative authorization."