In contrast to the situation in Funk Bros, however, Chakrabarty’s bacteria didn’t naturally exist and had to be engineered into being. Hence, the majority opinion reasoned that the Chakrabarty bacteria was not a discovery, but was an invention. As an invention, the bacteria could, therefore, be patented. Further, the court rejected the distinction made by Diamond between living and inanimate objects. The majority opinion concluded that this differentiation, between animate and inanimate objects, was an example of outdated legal criteria incapable of evaluating the status of products developed using new age technologies. In lieu of this the Court laid down a new distinction, one between human-made and naturally existing organisms. Thus, under this legal reasoning, the Chakrabarty court did not necessarily offer that gene patents were sustainable in and of themselves. Instead, the reasoning that came to justify gene patents developed through the separate criteria of ‘purified and isolated substances’, which will be discussed in the next chapter.

Following the Chakrabarty judgment, United States Patent and Trademark Office (USPTO) started granting patents on complex organisms that sufficiently fulfilled the patentability criterion lay down by the court in the decisions following Chakrabarty. One such instance was Harvard University ’s patent application for a genetically engineered mouse. This mouse, known as ‘oncomouse’, is highly susceptible to cancer and hence provides a useful tool for biomedical research in cancer therapy. Additionally, while the oncomouse patent application was pending, another patent was granted on a genetically engineered oyster whose biological make up had been modified to make its growth uniform and also made it edible at all times in its life cycle. The patent for the oyster was upheld by the USPTO Board of Appeals in the decision of Ex parte Allen (1987), a decision that led to a change in the policy of the USPTO. As a result the agency declared all non-naturally occurring organisms patentable so long as they fulfilled the statutory criteria of novelty, usefulness, and non-obviousness. The question of the patentability of human genes first time came before the court in Newman’s test application on a ‘humouse’. Newman spliced human and mouse genes together to produce a creature, which he called ‘humouse’, on which he sought a patent.

The USPTO, while processing the application found itself faced with the question – ‘how many human genes in a creature make it a human?’ The Court having realized the motivations behind the case carefully dealt with it to declare that no claims could be granted on any organisms that could arguably be human, for such patents would amount to slavery. Another, and more significant, attempt was by National Institution of Health (NIH), which in late 80’s started mapping/sequencing human genome in collaboration with Department of Energy (DOE). The NIH and DOE partnership applied for over 4000 patents related to different Expressed Sequence Tags (EST). ESTs act as the locators of DNA and, it is believed by most scientists, have very little practical utility beyond that.

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