The Canadian Biotechnology Advisory Committee (CBAC) has recently issued a Report to the Government of Canada’s Biotechnology Ministerial Coordinating Committee entitled "Patenting of Higher Life Forms and Related Issues".
The Report contains 13 recommendations, including proposals that would result in significant amendments to the Canadian Patent Act. Other recommendations merely propose conducting further study. Those recommendations that are of particular relevance to current Canadian patent law are discussed below.
One of the most significant recommendations in the Report is the CBAC recommendation that higher life forms, including plants, seeds and non-human animals be recognized under the existing Patent Act as being patentable subject matter (subject to certain limits on the rights of the patentee), provided that such subject matter meets the ordinary standards of novelty, non-obviousness and utility. The Federal Court of Appeal endorsed this very interpretation of the Patent Act in the "Harvard Mouse" case. The Harvard Mouse case has been heard by the Supreme Court of Canada and a decision is pending.
The Report proposes amending the Patent Act to prohibit patenting human beings "at all stages of development". Despite this language, it is not intended to preclude patenting of DNA sequences, gametes, stem and other cells, or organs of human origin.
Another interesting proposal put forward in the Report is a recommendation that the Patent Act be amended to include provisions that protect innocent bystanders from claims of patent infringement with respect to natural or accidental spreading of patented seed, patented genetic material, or the insemination of an animal by a patented animal. This "innocent bystander" argument was raised unsuccessfully in the matter of Monsanto Canada Inc. v. Schmeiser, wherein the defendant argued that his fields had become contaminated with Monsanto’s "Roundup-Ready" canola, without any advertent act on his part. The Monsanto case was appealed and is pending decision by the Federal Court of Appeal.
The Report also contains a recommendation that a "farmer’s privilege" provision be included in the Patent Act. Such a provision would specify that farmers are permitted to save and sow seeds from patented plants or to reproduce patented animals, provided these offspring are not sold as commercial propagating material, in the case of plants, or commercial breeding stock, in the case of animals.
Perhaps the most interesting recommendation in the Report is the proposal that the Patent Act be amended to include a research and experimental use exception that would allow the use of a patented process or product for either (a) private or non-commercial study, or (b) conducting research on the subject-matter of the patented invention to investigate its properties, improve upon it, or create a new product or process.
Furthermore, the Report recommends that Canada support international efforts to determine whether and how intellectual property can be used to protect traditional knowledge. A related proposal is a recommendation that the description of prior art in patent applications must include, so far as is practicable, traditional knowledge that has been made public through oral, as well as written or published, transmission. These proposals may not actually involve any change in existing laws.
Other recommendations in the Report address: establishing Patent Office guidelines for the patenting of biological material; developing of service standards for the Patent Office and publishing of Patent Office performance results; international patent harmonization, including ratification of the Patent Law Treaty, which addresses the formal requirements for filing patent applications and maintaining patents; and the establishment of an opposition procedure to permit a patent to be opposed on the grounds that it is invalid or void. We will report on any future developments stemming from the Report in upcoming issues of IP Perspectives.
David E. Schwartz is an associate with Smart & Biggar / Fetherstonhaugh in Ottawa.
Smart & Biggar is Canada’s largest firm practising exclusively in intellectual property and technology law. With offices in Ottawa, Toronto, Montreal, Vancouver and Edmonton, we offer a full range of intellectual property and technology law services. Related to Fetherstonhaugh through common partners, offices and personnel, we have a national and international reputation for the quality of our work and the calibre of our professionals.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
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