77 
ailing regular member, insisted its ruling was very limited. “We are not deciding,” 
it said, “whether living things in general, or, at most, whether any living things 
other than microorganisms, are within (the patent law) . These questions must be 
decided on a case-by-case basis.” 
Nonetheless, other statements seemed quite broad. The majority flatly declared 
that the fact that the culture was “alive” did not remove it from patent protection. 
In fact, it added, it is precisely “because it is alive that it is useful.” The judges said 
that microorganisms, like inanimate chemical compounds, were essentially manu- 
facturing “tools,” and declared that “the fact that microorganisms, as distin- 
guished from chemical compounds, are alive is a distinction without legal sig- 
nificance.” 
The minority judges, including a former U.S. Senator, maintained that “the 
nature of organisms, whether microorganisms, plants or other living things, is 
fundamentally different from inanimate chemical compositions.” Moreover, they 
said, there was no reason to believe that any legal distinction could be drawn 
“between microorganisms and more complex living things.” The whole subject, 
they argued, should be left for Congress to determine. 
The Government has about a month left to decide whether to appeal this 
decision to the Supreme Court. Meanwhile, another application is raising the 
issue in a somewhat broader form, one that even attorneys who support the court’s 
Upjohn ruling concede moves a significant step closer towards recombinant DNA 
technology. 
In this case, General Electric Co. is seeking a patent for a bacteria that contains 
extra-chromosomal genetic material that produce soil-degrading enzymes — a 
discovery of obvious use in combating oil spills. A different patent examiner 
and a different three-man PTO appeals board have unanimously turned down 
the application, and GE has appealed to the Patent Appeals Court. Argument 
was heard in December — with the previously ill judge back on the bench — and 
the court hasn’t yet made its ruling. 
Ever since the Upjohn case started making waves, there’s been intense discus- 
sion in legal circles. Several attorneys think that, as Wisconsin law professor 
John Stedman puts it, “the courts will find a way to keep things within bounds,” 
without any need for Congress to step in. Says patent attorney Donald Dunner: 
“As soon as you discuss patenting living organisms, people have visions of 1983. 
But I think it’s raising more passion than perhaps necessary.” 
Other students, though, reject the relaxed view. “I’m not sure the court’s 
ruling is quite as limited as it says,” asserts one corporate attorney. “It raises the 
S " m of whether ultimately someone could patent a human being — and that 
be up to Congress, not to a couple of judges.” 
PTO Associate Solicitor Gerald Bjorge stated this view in only half-facetious 
terms during oral argument in the GE case. “My children’s Shetland sheepdog,” 
he said, “was new and useful when it came into the world. We feed and culture it, 
and it is our burglar alarm. My childen’s cat was new and useful and we feed and 
culture it, and it is our mousetrap. How does this court ever hop^to distinguish 
between one living organism and another? Where and how will it draw the line?” 
[From Business Week. Dec. 12, 1977] 
A Commercial Debut for DNA Technology 
A tiny San Francisco company, just two years old, has scored a biomedical 
research coup that may have left its competitors in the dust. Genentech Inc. will 
get the patent rights to a new means of producing a brain hormone called somato- 
statin. But the exciting news is that scientists for the first time have employed 
controversial recombinant-DNA (gene-splicing) technology and the young science 
of artificial gene synthesis to produce the hormone. In addition, somatostatin has 
potential both as a research tool and as a medicine, and variations on its structure 
might well open the way for a whole new family of drugs capable of treating 
diseases that today defy medicine’s best efforts. 
The scientific breakthrough came at the University of California at San Fran- 
cisco, where researchers — along with the City of Hope Medical Center in Duarte, 
Calif., and the Salk Institute — had been pursuing the new technique since mid- 
1976. “Molecular biology has reached the point where it can become involved in 
industrial applications,” says Herbert W. Boyer, leader of the research team and 
a co-founder of Genentech, who now serves as a consultant to the company. “Our 
strategy,” says Robert A. Swanson, Genentech’s 30-year-old president, “is to 
concentrate solely on recombinant dna and to manufacture and market products 
to major medical, pharmaceutical, and industrial companies.” 
[Appendix B — 126] 
