Intellectual Property Update
August 2000
Federal Court of Appeal rules
higher life forms patentable
On August 3, 2000, in a two-to-one decision, Canada’s Federal Court of Appeal
decided that the “oncomouse,” a mouse genetically engineered to be susceptible to cancer, is
an invention that falls under Canada’s Patent Act, and is, therefore, patentable. The
oncomouse is already patented in the United States and the European Union. Prior to
Federal Court of Appeal’s decision, only single-celled organisms and other lower life forms
were patentable in Canada.
The availability of patents for higher life forms raises many public policy issues for
consideration, such as what it means to classify a form of life as an object or commodity.
However, the majority decision explicitly refused to take into account any policy
considerations in making its determination, preferring instead to rely on an interpretation of
the plain words of the Patent Act. As Rothstein J. stated, in writing for the majority, “[it] is
the duty of the Court to take the statute as it finds it, neither expanding its interpretation
beyond Parliament’s intention as expressed by the language in the statute, nor limiting that
expression by reading words of limitation into the statute not placed there by Parliament.
To the extent the appeal gives rise to policy questions, they are to be addressed by
Parliament and not the Court.” Despite this stance, however, Rothstein J. limited the scope
of patentability, finding that human beings could never be patented. The Court noted that
patenting is a form of owning property, and ownership concepts cannot apply to human
beings.
Rothstein J. acknowledged that the majority decision relied heavily on the majority
opinion in Diamond Commissioner of Patents and Trademarks v. Chakrabarty, a 1980 decision of
the United States Supreme Court, which allowed (in a five-four split) the patenting of a
bacterium that could break down crude oil. Rothstein J. adopted the reasoning that the
proper question to be addressed in a patent application is not whether the subject of the
application is animate or inanimate, but whether it is made by a person or is something that
occurs naturally.
There was no dispute that the oncomouse is new, useful, and non-obvious. As such,
it meets the traditional touchstones for patentability. Transgenic in nature, the oncomouse’s
2
cells contain a foreign cancer gene that was assembled and artificially incorporated into its
genome through human intervention. Not merely a result of cross-breeding, the oncomouse
is a product of sophisticated genetic engineering: an oncomouse does not exist in nature.
Rothstein J. found that this was clear evidence of inventive ingenuity. In dispute was
whether the oncomouse was a “composition of matter” as defined by the Patent Act.
Rothstein J. found that this term should be broadly interpreted, reasoning that the language
of patent law should be given wide scope because inventions are, necessarily, unanticipated
and unforeseeable.
Isaac J., writing in dissent, questioned whether it was open to the majority to accept
the reasoning in Chakrabarty. First, Isaac J. felt that considerable deference is owed to the
Commissioner of Patents’ decision in a morally divisive case such as the one at bar, because
the Commissioner takes public policy into account when forming a decision. Second, Isaac
J. felt that the reasoning of the Chakrabarty case had probably already been considered by the
Supreme Court of Canada in previous cases, but it had not been adopted.
While the decision comes more than fifteen years after the patent application was
filed, the legal battle may not be over yet. Given the importance of this issue, it is expected
that the Commissioner of Patents will apply for leave to appeal to the Supreme Court of
Canada.