Ch. 12— Patenting Living Organisms • 247 
knowledge of an\ single organism’s biophysical 
and biochemical mechanisms. C'onsecjuently, 
there may he cases where it is difficult to know 
the prior art precisely enough to make a deter- 
mination of no\ elt\ . 
Similarly, microbial comple\it\ I'aises prob- 
lems in determining nonoln iousness because 
there are so many different w ays of engineering 
a new organism with a desired trait— e.g., a 
gene could he inserted into a given plasmid at 
se\ eral different positions. If a microbe w ith the 
gene at one position in the plasmid were 
patented, could a patent he denied to an other- 
wise structurally identical organism with the 
gene at a different position because the second 
was obvious? Perhaps not. The second organism 
w ould probably not be an oln ions in\ ention if it 
pro\ided significantly more of the product, a 
better quality product under similar fermenting 
conditions, or the same product under cheaper 
operating conditions. 
.As to enablement, the major problem has 
been discussed pre\ iously: placing a culture of 
the micro-organism into a repository is the ac- 
cepted solution. One problem w ith repositories, 
howe\ er, is their potential misuse. In a case in- 
\ ol\ ing alleged price fi.xing and unfair competi- 
tion— e.g., the Federal Trade Commission found 
that micro-organisms placed in a public reposi- 
tory pursuant to process and product patents 
on the antibiotic .Aureomycin did not produce 
the antibiotic in commercially significant 
amounts: in actual practice, other strains were 
being used for production, and the company in- 
\ ol\ ed was able to benefit from a patent, w'hile, 
in effect, retaining the crucial micro-organism 
as a trade secret.'®* 
Comple.xitv also raises questions about the ap- 
propriate scope of patent co\ erage. In a patent, 
the in\ entor is permitted to claim his inx ention 
as broadly as possible, so long as the claims 
''‘American Cyanamid Co., el. al, 63 FFC 1747, 1905 n. 14 (1963), 
vacated and remanded, 363 F.2d 757 (6th Cir. 1966), readopted 72 
FTC 623 (1967), affirmed 401 F.2d 574 (6th Cir. 1968), cert, denied, 
394 L'.S. 920(1969). 
■The company had maintained that sec. 112 simply required it 
to deposit a strain that conformed to the description of the one 
found in the patent application. Hotve\ er, it is often the case with 
bacteria that manv strains of a species will conform to e\ en the 
most precisely written description. 
made do not ox'erlap with any "prior art” or ob- 
x’ious extensions thereof— e.g., a person who 
dex eloped a particular strain of Escherichia coli 
that produced human insulin through a geneti- 
cally modified plasmid could be entitled to a pat- 
ent coxering all strains of E. coli that produce 
the insulin in the same xvay. Chakrabarty’s pat- 
ent application— e.g., claimed "a bacterium from 
the genus Pseudomonas containing therein at 
least txvo stable energy generating plasmids, 
each of said plasmids providing a separate 
hydrocarbon degradative pathway.” Several 
species and hundreds of strains of Pseudomonas 
fit this description. A patent limited to a par- 
ticular microbial strain is not particularly 
valuable because it can easily be circumented 
by applying the inventive concept to a sister 
strain; on the other hand, a patent covering a 
xvhole genus of micro-organism (or several) may 
retard competition. This problem will probably 
be resolx ed by the Patent Office and the courts 
on a case-by-case basis. 
.Another aspect of the same problem is 
xvhether a patent on an organism w^ould cover 
mutants. It xvould not if the mutation occurred 
spontaneously and sufficiently altered the 
claimed properties. Hoxvex er, if a nexv organism 
xvere made in a laboratory xvith a patented 
organism as a starting point, the situation xvould 
be analogous to one xvhere an inventor can pat- 
ent an improx ed version of a machine but must 
come to terms xvith the holder of the "domi- 
nant” patent before marketing it. 
The Chakrabarty decision also raises ques- 
tions about the scope of section 101 and its rela- 
tion to the plant protection Acts— e.g., plant 
tissue culture is, in effect, a collection of micro- 
organisms; should it be viewed as coming under 
section 101 instead of either of the plant pro- 
tection Acts? Could plants excluded under these 
Acts— such as tuber-propagated plants or first- 
generation hybrids— be patented under section 
101? Could any plants or seeds be patented 
under section 101, and if so, is there still a need 
for the plant protection Acts? If there is a need, 
xvould the Acts be administered better by only 
one agency? The Senate Committee on Appro- 
priations has directed the Departments of Com- 
merce and Agriculture to submit a report 
