In our March 1999 Newsletter and in our February 2002 Newsletter we previously reported on the Federal Trial Court and Court of Appeal Decisions relating to Harvard’s attempts to obtain a Canadian patent for a genetically modified mouse that is useful in cancer research, the Trial Court denying that the mouse constituted patentable subject matter and the Appeal Court reaching the opposite conclusion). The Supreme Court of Canada has now had the last word in Harvard College v. Canada, agreeing with the Trial Court in a 5 - 4 decision holding that patent protection is not possible in Canada for higher life forms.

The key issue in the case was the Canadian Patent Statute’s definition of “invention” which is similar to that of the United States and reads as follows:


According to the opinion of the majority of the Court, the question to be decided therefore was whether Parliament had intended when enacting the Patent Act that a higher life form could be considered as a manufacture or composition of matter and so fall within the statutory definition of invention. They concluded that Parliament had not had this intention and that for higher life forms to be patentable legislation to this effect would be required. In reaching this conclusion, the majority noted how the United States Supreme Court had dealt with similar wording in the U. S. statute in Diamond v. Chakrabarty but declined to follow the U.S. Supreme Court’s reasoning, pointing out that “Parliament did not define invention as ‘anything new and useful made by man’”. After noting that dictionary definitions in both English and French of the term “manufacture” or “fabrication” (the word used in the French text of the Canadian statute) referred to articles, materials and object technique which the court felt could not be applied to a mouse, the court found that “a complex life form ... cannot easily be characterized as ‘something made by the hands of man”. Therefore, such higher life forms were not manufactures as this term was used in the statute. So far as the possibility of the mouse being a composition of matter was concerned, the court felt this a broader term than “manufacture” but since not all of the components going to make up a mouse were combined or mixed together by a person, the term “composition of matter” could not be construed to cover higher life forms either.

More important than the textual analysis in coming to its decision, however, was the following comment:



This conclusion was bolstered by concerns that, if the present definition of invention were construed to cover higher life forms, then there was no logical basis for holding that patents could not be granted to cover humans and the fact that Parliament had made special provision for plant breeders’ rights implies that Parliament had not considered higher life forms, such as plants, as being patentable.