Patents for animals from selective breeding

By Dennis Crouch

In re Idem (Cir. Fed. 2012)

In an unprecedented opinion, the Federal Circuit reoffended (ditto) and upheld the decision of the PTO Patent Board rejecting patentability. Here, the court asserted that the cross claimed by Mr. Ditto between a bobcat and a domestic cat is anticipated by the prior art. In particular, the Pixie-Bob has been around for some time.

In the appeal, counsel for the USPTO also argued that the cat claims were all “patent ineligible because they involve a product of nature.” Here, the “product of nature” argument is based on the fact that a domestic cat and a bobcat can and will mate “naturally” without further human intervention. However, the Solicitor made a distinction between this case and the patenting of animals with particular traits developed through a selective breeding process. An example of this is US Patent No. 5,602,302 (Mikami) which claims a hypersensitive bronchial guinea pig created by sibling mating of guinea pigs identified as hypersensitive. In distinguishing the ‘302 patent, counsel wrote that:

the claims of the Idem application do not demonstrate how the claimed cat breed is the product of human intervention. The claims do not contain any details about how the cats are raised, the characteristics desired for breeding or the expected results. All that is required is that a “purebred cat” be produced by mating a bobcat, lynx or lynx lynx with a domestic cat. Identifier. In addition,… the specifications do not provide details regarding the type of characteristics or traits required in the claimed “purebred” cat. While Idem maintains that there is no difference between the [patented] Guinea Pig … and Ditto’s Cat, Mikami’s patent is significantly different from Ditto’s claim: Mikami discloses a specific breeding process used to prepare guinea pigs with a particular trait, while Ditto’s claim requires “[n]o quantity or type of specific selection ”and“ the breeding program may end upon identification of any desired effect. In short, contrary to Ditto’s claim, Mikami’s claims recite a specific desired trait and Mikami’s patent discloses a specific breeding method used to achieve that trait, distinguishing the guinea pigs claimed by Mikami from those in the wild.

In its decision, the federal circuit refused to decide the question of eligibility of the object and rather affirmed for reasons of anticipation. The court simply wrote that “we do not meet his rejection under section 101”. In that case, the court followed the course Professor Merges and I suggested in our 2010 article on the avoidance doctrine. Rather, some members of the tribunal argued that section 101 issues should be treated as prior issues that cannot be avoided.

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