Key Cases - Pre-Monsanto: Patenting Life in Canada (2/3)

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Unlike in the United States, Canadian patent law does not allow patents for “everything under the sun that is made by man”. [1]. Rather, the Canadian courts use statutory interpretation to examine whether the invention in question fits within the categories of “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement”. [3] Many scholars and lawyers have taken this to mean that a valid patent is one which protects the intellectual property rights of that which is “novel, useful, inventive, and … consist[s] of patentable subject matter”. [4] Though not the main issue discussed in Monsanto v Schmeiser, this final criterion was taken up by the 2004 Supreme Court, who addressed the long-standing confusion surrounding the validity of patents on life.[5]  

The Evolution of Patenting Life in Canada

Abitibi Co., Re 1982, a patent appeal concerning “a mixed fungal yeast culture system” was the first big instance in Canada in which the Commissioner of Patents weighed in on whether patenting life was permitted. [6] The Board ruled that only lower life forms or micro-organisms are patentable, so long as they “are produced en masse,… and … possess uniform properties and characteristics”. [7] This line of reasoning was then used to reject a bid to patent selectively bred soybean plants in Pioneer Hi-Bred Ltd, 1986 [8].  The Board’s decision to reject the bid was appealed all the way to the Supreme Court in 1989. The highest court “did not make a ruling on the Commissioner's decision to reject the claims” as it rejected the appeal for reasons of inadequate disclosure. [9] It did, however, provide reasons in obiter dictum as to why such a soybean plant would not be considered patentable, mainly that crossbred plants are merely “creations following the laws of nature”. These reasons went on to influence Parliament to pass the Plant Breeder’s Rights Act forbidding patents on crossbred plants. [10]  

Many years later in 2002, the Supreme Court was given the opportunity to clarify its stance on patenting life when it heard a case calling for the patentability of an oncomouse that hatches from a “genetically altered oncomouse egg”. [11] Harvard College, wishing to advance cancer research, inserted genes into mouse eggs which made the mice more susceptible to cancerous tumours so they could be used to test suspected carcinogenic substances. [12] The main issue in this case was to determine if there was intent on Parliament’s part to include higher life forms in the scope of what is “manufacture[d] or [a] composition of matter”. [13] In a split 5-4 decision, the Supreme Court held that despite the patentability of lower life forms, as established with Abitibi Co., Re, the “common sense differences between” lower and higher life forms [14], like the “capacity to display emotion and complexity of reaction” [15], provided justification for a decision that the latter should not be patentable. The Supreme Court concluded that higher-life forms, like organisms, were not intended to be included in the Patent Act, and instead only lower life forms, like cell cultures, could be patented under the Act. Unfortunately, many remained confused about what exactly constituted higher and lower life forms. 

The Monsanto Decision and the Slight Change in Patenting Life

The Supreme Court had the opportunity to clarify its position in Monsanto. [16]. Though many scholars deny that Monsanto entirely overturned Harvard, it is argued that the former’s dissent led to slight “backtracking” and an expansion of the 2002 decision. [17] Often attributed to a shift in the court following the retirement of Justices L'Heureux-Dubé and Gonthier [18], the bench in Monsanto maintained that higher life forms are not patentable but stipulated that the genes and cells that make up the higher life forms are. In other words, the “fundamental building blocks … – DNA, RNA, proteins, and genes – can be patented in Canada”. [19] Cell cultures which were permitted in Harvard were expanded to encompass cells in general. Consequently, though patentees cannot hold rights over organisms like mice or plants, they can still claim “de facto equivalent protection over life forms by framing the scope of their patent claim as being limited to the genetically modified cells or genes within a living organism”. [20] Any call for the destruction or handing over of the patented cells or genes would necessarily lead to the destruction or handing over of the entire organism. [21]

The Monsanto decision has been seen as “more permissive” [22] and “favorable to patentees in the life sciences industry” than that of Harvard. [23] There are several potential implications to this expansion, such as the fact that Monsanto brought Canada closer to its “major trading partners” [24] –notably the United States and the European Union—after it became the “first, and …last…to prohibit all patents of higher life forms.” [25] However, beyond these economic implications, it entailed broader impacts on the realm of bioengineering in general as “biotechnology patents ‘may in fact deter rather than promote innovation”. [26] Many were also worried that such a precedent may “generate real ethical concerns about the sanctity of life”. [27] The next blog post will explore whether some of the implications of the Monsanto decision have manifested since 2004.

Endnotes

[1] Eugene C. Lim, “Harvesting the “Forbidden Fruit” of Biotechnology Research: Genetic Engineering, International Law and the Patentability of Higher Life Forms in Canada” (2012) 10 Can. J. L. & Tech. 205 at 217.

[2] Ryan J. Atkinson, “Mixed Messages: Canada's Stance on Patentable Subject Matter in Biotechnology” (2005) 19 IPJ 1 at 5.

[3] Patent Act RSC 1985, c. P-4, s 2.

[4] Atkinson, supra note 1 at 2.

[5] See Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 at para 8 [Monsanto].

[6] Abitibi Co., Re (1982), 62 C.P.R. (2d) 81 (Can. Pat. App. Bd. & Pat. Commr.) at para 1.

[7] Ibid at para 20. 

[8] See Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), 1986, 1 C.P.R. (3d) 311 (Can. Pat. App. Bd. & Pat. Commr.).

[9] Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76 at para 127 [Harvard].

[10] See Atkinson, supra note 2, at 7.

[11] Harvard, supra note 9 at para 3.  

[12] See Ibid at para 121.

[13] Patent Act, supra note 3, at s.2.

[14] Harvard, supra note 9 at para 199.

[15] Ibid at para 204.

[16] See Karen L. Durell, “Intellectual Property Protection for Plant Derived Vaccine Technology: Here They Come Are We Ready or Not?” (2006) 10:3 Lex Electronica 1 at 19.

[17] Adam Crane, "Of Mice and Man: Patentability of Genetic Material and the Protection of

Intellectual Property Rights" (2009) 18:1 Dalhousie J Legal Stud 93 at 102. 

[18] See A. David Morrow & Colin B. Ingram, "Of Transgenic Mice and Roundup Ready Canola: The Decisions of the Supreme Court of Canada in Harvard College v. Canada and Monsanto v. Schmeiser" (2005) 38:1 UBC L Rev 189 at 205.

[19] Crane, supra note 17 at 102.

[20] Lim, supra note 1 at 2.

[21] See Norman Siebrasse, “Comment on Monsanto Canada Inc. v. Schmeiser,” Case Comment (2004) 83:3 Can Bar Rev 967 at 976.  

[22] Atkinson, supra note 2 at 8.

[23] Lim, supra note 1, at 207.

[24] Atkinson, supra note 2 at 4.

[25] Ibid at 13.

[26] Ibid at 2.

[27] Ibid at 1.