Animal Legal Defense Fund v. Quigg: Renewed Challenge to Animal Patents
![handle is hein.journals/umkc59 and id is 419 raw text is: Animal Legal Defense Fund v. Quigg: Renewed
Challenge To Animal Patents
David Burke*
INTRODUCTION
On April 7, 1987, the Commissioner of the United States Patent and
Trademark Office (PTO), Donald J. Quigg, issued a notice (Notice)' that was,
and continues to be, the subject of considerable controversy. The Notice
stated, in pertinent part, the following:
[Tihe Patent and Trademark Office is now examining claims directed to mul-
ticelluar living organisms, including animals. To the extent that the claimed
subject matter is directed to a non-human nonnaturally occurring manufac-
ture or composition of matter - a product of human ingenuity such claims
will not be rejected under 35 U.S.C. [section] 101 as being directed to nonstat-
utory subject matter.2
In effect, the Notice reversed prior agency policy of rejecting claims directed to
animals.3 Prior to the Notice, the PTO had taken the position that an animal,
being a living entity and a product of nature, did not constitute patentable
subject matter as defined in 35 U.S.C. section 101.
While most of the debate regarding the Notice and the patenting of ani-
mals has taken place in Congress and the legal community, one battle over the
propriety of the Notice has been taking place in court. Following the issuance
* J.D. Candidate, 1992, University of Missouri-Kansas City School of Law.
1. 1077 Off. Gaz. Pat. Office 24 (1987).
2. Id. (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (emphasis added)); see also
35 U.S.C. § 101 (1988) which provides that [wihoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
3. See F. FOSTER & R. SHOOK, PATENTS, COPYRIGHTS & TRADEMARKS (1989). A patent applicant
must submit an application to the PTO, one part of which is a description of the claims. Id. at 89.
The claims define [the] invention in concise language. Id. at 101.
4. See Ex parte Allen, 2 U.S.P.Q.2d (BNA) 1425 (Bd. Pat. App. & Int. 1987), aff'd, 846 F.2d
77 (Fed. Cir. 1988) (WESTLAW, Fip-cs database, No. 87-1393) (unpublished opinion). The Board
of Patent Appeals and Interferences (Board) noted that the patent examiner rejected the appli-
cant's patent claim for polyploid oysters because they are held to be living entities ... [and are]
controlled by laws of nature and not a manufacture by man that is patentable. Id. at 1426.
Although the Board did reverse this rejection, they affirmed the examiner's rejection on the
grounds of obviousness. Id. at 1427. See also In re Merat, 519 F.2d 1390 (C.C.P.A. 1975). Merat
was the first attempt to patent an animal -- a chicken developed through selective breeding. Id. at
1392-93. The claim was rejected by the PTO as being directed to nonstatutory subject matter, in
addition to obviousness and failure to adequately disclose the invention in accordance with 35
U.S.C. § 112 (1988). Id. at 1393. The Court of Customs and Patent Appeals (now the Court of
Appeals for the Federal Circuit) affirmed the rejection for the applicant's failure to comply with 35
U.S.C. § 112 but failed to reach the issue of whether the claim met the requirements of § 101. Id.
at 1394. Merat was cited by the examiner in Allen to support'the rejection of the claimed oyster.
Ex parte Allen, 2 U.S.P.Q.2d at 1426.](ViewImageLocal?handle=hein.journals/umkc59&div=23&collection=&method=preview&ext=.png&size=3)
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Animal Legal Defense Fund v. Quigg: Renewed Challenge to Animal Patents
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