246 • Impacts of Applied Genetics — Micro-Organisms, Plants, and Animals 
and not worth the time and money to prosecute 
Reliance on trade secrecy might then extend its 
commercial life. 
Most companies would patent truly pioneer 
inventions, which often provide the opportunity 
for developing large markets. Moreover, pat- 
ents of this sort tend to have long commercial 
lives, since it is difficult to circumvent a pioneer 
invention and since any improvements are still 
subject to the pioneer patent. Furthermore, in- 
fringement is easy to detect because of the in- 
vention’s trailblazing nature. 
The last two factors involve considerations 
secondary to a product and its market. Ob- 
viously, any publication of the experiments 
leading to an invention foreclose the option of 
trade secrecy. Also, company must evaluate the 
options of protection via either patenting or 
trade secrecy in terms of their respective cost 
effectiveness. 
IMPACT OF THE COURT’S DECISION 
ON THE BIOTECHNOLOGY INDUSTRY 
The Chakrabarty decision will add some pro- 
tection for microbiological inventions by pro- 
viding companies with an additional incentive 
for the commercial development of their inven- 
tions, particularly in marginal cases, by lower- 
ing uncertainty and risk. A greater effect will 
result from the new information disclosed in 
patents on inventions that otherwise might have 
been kept secret indefinitely. Competitors and 
academicians will gain new knowledge as well 
as a new organism upon which to build. The 
Patent Office had deferred action on about 150 
applications, while awaiting the Court’s deci- 
sion; as of December 1980, it was processing ap- 
proximately 200 applications on micro-orga- 
nisms.'®’* 
Depending on the eventual number and im- 
portance of patented inventions that would 
have otherwise been kept as trade secrets, the 
ultimate effect of the decision on innovation in 
the biotechnology industry could be significant. 
"Rene Tegtmeyer, Assistant Cionimissioner tor Patents, U.S. Pat- 
ent and Tradeniark Otfice, personal communication, Jan. 8, 1981. 
‘These applications include about 100 on geneticallv en- 
gineered microbes and about 100 on cultures oT strains isolated 
from nature. 
Conversely, if the Court had reached the op- 
posite decision, the industry would ha\e been 
held back only moderately because of reason- 
ably effective alternative means of protection. 
Impacts of the Court's decision on the 
patent law and the Patent 
and Trademark Office 
The key rationale supporting the Court’s 
holding Chakrabarty’s microbe to be patentable 
was the fact that it was manmade; its status as a 
living organism was irrele\ ant. The Patent Of- 
fice interprets this decision as also permitting 
patents on micro-organisms found in nature hut 
whose useful properties depend on human in- 
tervention other than genetic engineering,'^ 
e.g., if the isolation of a pure culture of a 
microbial strain induces it to produce an an- 
tibiotic, that pure culture would he patentahU' 
subject matter. 
Because of the complexity, reproducibility, 
and mutability of li\ ing organisms, the dei'ision 
may cause some problems for a body of law de- 
signed more for inanimate ohjec'ts tlian for li\ - 
ing organisms. It raises (luestions aliout the 
proper interpretation and application of the re- 
quirements foi' no\ elty, nonohx iousness, and 
enablement. In addition, it raises (|uestions 
about how broad the scope' of patent coxcrage* 
on important mici’o-organisms should be' and 
about the continuing need lor tlu' txxo plant jiro- 
tection Acts. These uncertainties could I'e'snlt in 
increased litigation, making it more' eliffie ult anel 
costly for oxvners eif pate'nts ein lix ing eirganisms 
to enforce their rights. 
The complexity ejf living matte'i' xxill make' it 
difficult for anyeine examining the' inxe'iitiein tei 
determine if it meets the reH|uii e'me'nts loi- neix • 
elty, nonobviousness, and e'liable'me'nt. Mie ie)- 
organisms can have differeMit e'harae te'ristie-s in 
different enviremments. Meire'eix e-r, mie rohial 
taxonomists eiften differ' ein the' pre'e i.se' e l.i.s.sil i- 
cation of mici’eihial sti'ains. Ia e'ii at te'i' e'xpe'iisix e' 
tests, uncertainty may still e'xist aheiut xxhe'thi'r 
a specific micrei-eii’ganism is elistine t lierm eithe'i' 
known strains; scieintists elei neit haxe* e-omple'le* 
'Mbid, .liiii. 7 , 198 I 
