USPTO: Still No Patent on Life Containing Human Cells

Stuart Newman was in the news last week.  Newman, a professor of biology at the New York Medical College, filed several patent applications on chimeric embryos and animals containing human cells. For instance, in the most recent application, Newman claimed the following:

Claim 1. A chimeric embryo comprising cells from a first and a second animal species, wherein said first animal species is human, wherein said second animal species is non-human, and wherein said second animal species is non-primate.

It turns out that Newman & his partner Jeremy Rifkin had no intention of actually comercializing the human-animal chimera.  Rather, they hope to highlight the issue in the public eye and to set a legal precedent.

In the most recent office action [pdf], they received (among others) a rejection under 35 U.S.C. Section 101 as non-statutory subject matter, and claimed victory.  The OA points out that, although 101 does not explicitly restrict the patentability of humans, the PTO believes that its policy of denying such patents is supported by the statute.

Applicant argues that the statute does not restrict patentability based on whether the claims cover a human being, and that the Director lacks authority to impose a limitation on patenting a human. . . . the Office does not agree that humans are patentable subject matter. (See the earlier office action [pdf] for a more detailed analysis of the statutory authority.)

In its analysis, the Patent Office tries to distinguish Diamond v. Chakrobarty (1980) by differentiating between 'man' and 'those inventions and discoveries that could be made by man.'  It appears that they argue man cannot make man. 

Newman & Rifkin have decided not to appeal.  And thus, it appears that Russ Krajec's blog title 'anything under the sun made by man' is safe for now. 

Of course, these guys have not created any legal precedent with this case.  As noted by Examiner D. Crouch (No relation to me), "patentability is determined on the totality of the record on a case-by-case basis.  Whether similar claims in other applications may have been treated differently is neither controlling nor dispositive on how they are to be treated in any other application."

Comments

[Michael]

In response to applicant's argument that 101 doesn't prohibit claims "embracing" human beings, why didn't the PTO point to the Weldon amendment to the Consolidated Appropriations Act of 2004, which forbids the USPTO from issuing patents on claims "encompassing a human being." Pub. L. 108-199 (2004). This provides explicit statutory support for current USPTO policy.

Perhaps the PTO does not want to rely on statutory language that may not always be there, since it is only in an appropriations bill. Or is there a view that claims on chimeras don't "encompass" but somehow still "embrace" human organisms?

[Dennis]

Interesting comment. Michael refers us to Pub. L. 108-199 (2004) which is an appropriations bill that includes funding for the Patent Office. Section 634 of the law states that "None of the funds appropriated or otherwise made available under this Act may be used to issue patents on claims directed to or encompassing a human organism."