Harvard Mouse Patentable

In a decision that has far-reaching implications for the Canadian patent system, the Federal Court of Appeal ruled on August 3, 2000 that Harvard University may be granted a Canadian patent for a genetically modified mouse. The ‘oncomouse’ has been genetically modified to develop human cancer traits as an aid in cancer research and has previously received patents in the United States, Europe and Japan.

The Federal Court of Canada—Trial Division had earlier upheld the Commissioner of Patents’ rejection of the oncomouse patent application on the grounds that the oncomouse was not proper subject matter for a patent and thus ineligible for patent protection. However, in a 2-1 decision, the Federal Court of Appeal ruled that the mouse, and other genetically modified non-human mammals do qualify as inventions under the Patent Act.

In the decision, Justice Marshall Rothstein said that courts should take an open-minded approach to new technologies and the patent system, noting that “The language of patent law is broad and general and is to be given wide scope because inventions are, necessarily, unanticipated and unforeseeable.” Judge Rothstein found that the oncomouse could be patentable under the Canadian Act on the basis that it constituted a “new and useful composition of matter”, and thus was an “invention” for the purposes of the Act. In Rothstein’s view the oncomouse was “a specific life form that did not exist in nature.” While the decision opens up the possibility for patenting essentially any kind of genetically altered animal, the court stressed that it does not open the door to the patenting of human genetic material.

David Morrow, a senior partner in the Ottawa office of Smart & Biggar argued the case on behalf of Harvard University. Steven Garland, another partner in the firm’s Ottawa office also appeared on the University’s behalf. Fredrick Woyiwada represented the Deputy Attorney General of Canada while Paul Muldoon, Theresa McClenaghan and Michelle Swenarchuk represented the Canadian Environmental Law Association, which had intervenor status in the case.