In our March 1999 Newsletter, we reported on the decision of the Federal Trial Court upholding the decision of the Commissioner of Patents refusing the grant of a patent for a mammal, typically a mouse, that had been genetically engineered to increase its susceptibility to cancer. The trial court's decision has been reversed by the Court of Appeal in President and Fellows of Harvard College v. Commissioner of Patents. The Commissioner has appealed to the Supreme Court of Canada, whose decision is still awaited.

It will be recalled that the trial court had held the mouse not to be a man-made composition of matter which would be patentable, because most of the features of the mouse derived not from human intervention but from nature. In its decision, the majority of the Federal Court of Appeal noted that the definition of invention in the Canadian statute was similar to that in the United States. It therefore looked to the United States Supreme Court case of Diamond v. Chakrabarty for guidance as to the meaning of this term. In Chakrabarty, the U.S. Supreme Court had noted that combinations of substances could be compositions of matter and had gone on to hold that a novel genetically modified bacterium was patentable. The Canadian Court of Appeal concluded that therefore the unicellular construct that resulted from inserting a gene that increased susceptibility into a mouse embryo was similarly patentable as a novel composition of matter. It therefore followed that the mouse which grew from this unicellular construct was also a composition of matter and by similar logic so were its progeny, which were patentable as long as they possessed the inserted gene. Arguments that such logic would open the doors to the patenting of humans were dismissed on the ground that patents gave rise to a form of ownership. Since humans could not be owned, it was clear that the patent law did not extend to the patenting of humans.

The minority of the Canadian Appeal Court noted that the Canadian Supreme Court had previously, in a case relating to the production of seeds by cross breeding, declined to agree with the U.S Supreme Court's reasoning in Chakrabarty and took the view that any decision on the patenting of animals was best left to parliament rather than the courts.