09 October 2020


'Patentability and de-extinct animals in Europe: the patented woolly mammoth?' by Aisling McMahon and David M Doyle in (2020) Journal of Law and the Biosciences comments 

De-extinction is a hot topic within conservation science but the potential patentability of de-extinct animals in Europe has hitherto been unexplored. This article addresses this lacuna, examining the legal, commercial, and ethical implications of patenting de-extinct animals under European patent law. The article is organized into four parts. Part I explores the reasons why patents are relevant and may be applied for in this context. Part II provides an overview of the scientific techniques currently being used in de-extinction projects, setting the foundation for the analysis of patentability which follows. Part III then critically assesses whether recreated animals would qualify as patent eligible subject matter under European patent law. It also investigates the extent to which European patent exclusions such as those on animal varieties, essentially biological processes, and the morality provisions might apply and whether recreated animals would meet the novelty requirement for patentability. Part IV concludes by highlighting the possible ramifications of patenting such animals, elucidating the chasm between the cultural and symbolic significance held by such animals, and their lack of differential treatment in the patent law sphere. It argues that de-extinction reignites questions around the scope of patents, and the role of ethical considerations within patent decision-making which warrant urgent reconsideration. 

 The authors argue 

 Ever since the 1993 blockbuster film ‘Jurassic Park,’ the notion of bringing vanished species back to life has hovered on the boundaries of reality and science fiction, but scientists are now reputedly on the brink of de-extinction. While conservationists argue that this risks persuading lay people that extinction is reversible, technological advances in synthetic biology and genetics have made the revival of extinct species a real scientific possibility, with much of the recent literature in this area shifting from whether we can resurrect extinct species to whether we should. In May 2016, for instance, the International Union for the Conservation of Nature Species Survival Commission released ‘Guiding Principles for Creating Proxies of Extinct Species for Conservation Benefit’ (2016), while scientists, conservationists and bioethicists, inter alia, have begun to consider the ethics of reviving extinct species, the optimal candidate species for de-extinction, as well as attempting to conduct cost-benefit analyses of both resurrection and reintroduction. The ‘nascent discipline’ of de-extinction has been the topic of animated debates within the scientific community,5 but at least one point of consensus has emerged: we are now on the brink of de-extinction. As Donlan puts it, ‘[t] here are many unknowns surrounding de-extinction. Whether it will happen or not, however, is likely not to be one of them.’ 

Much of the academic literature to date has understandably focused on the science of bringing back extinct species, but ‘de-extinction presents us with myriad ethical, legal and regulatory questions.’ These include a range of questions around the legal status of de-extinct animals, including potential legal obligations to protect them, and the resulting environmental issues which may arise. Moreover, an important but underexplored question is the extent to which such animals, if successfully recreated, could be commercialized. Watching certain resurrected species, especially ‘cool’ and ‘charismatic megafauna,’ is expected to be an exciting diversion for many (indeed, it is often considered, albeit anecdotally, to be a central motivation for de-extinction), but little academic work has focused on the ‘non-ecological “instrumental values” that de-extinct species would be likely to have for human beings, most notably, their commercial value.’ One avenue to obtain such value from de-extinct animals is via the patent system, and specifically applying for a patent on the revived animal, yet it remains an open question whether such animals would be patentable in the European context, if ongoing de-extinction attempts are successful. In taking this focus, the article explores the legal, commercial, and ethical implications of ‘patenting’ de-extinct animal species. 

This article breaks new ground by exploring the potential European patent law implications of de-extinction in relation to animal life. In doing so, this paper focuses on animal life, as opposed to plant or other organisms, which could also be recreated via de-extinction. The rationale underlying this approach is rooted in the fact that it is these projects (e.g. particularly the Woolly Mammoth project) that have captured the public imagination and provoked the most scholarly concern to date. For this reason, we wish to explore how applications for patents on such animals in Europe may play out if such megafauna are successfully recreated. 

In examining this issue, the article focuses on the European patent law context for two main reasons: first, to date, academic inquiries of the legal implications of de-extinction have focused almost exclusively on domestic law in the USA. This is not to suggest that these studies are less valuable for adopting such an approach—the USA, after all, is one of the traditional centers of conservation power and where key de-extinction projects are ongoing but many of the species that are considered viable candidates for some form of de-extinction are not species whose habitats or migration routes are exclusive to, or even include, the USA. The applicable laws outside the US context are in vital need of investigation if we are to preemptively address the legal issues that could conceivably arise should de-extinction become feasible in the next few years. To date, these aspects of species recreation and particularly the patent implications in Europe have remained unexplored. This article aims to address this lacuna by furnishing a detailed analysis of de-extinction under European patent law. 

Secondly, the focus on European patent law was taken because Europe is one of the few patent jurisdictions with express moral exclusions from patentability. Therefore, examining the European context provides a useful site to examine the ethical ramifications of granting patents in the de-extinction context and the extent to which such ethical issues are likely to be considered within patent law. It explores how the current exclusions under European law—which have proved so controversial in the past for transgenic animals—could potentially be interpreted in the de-extinction context. Given that European patent law has express moral exclusions from patentability, concerns posed by patents on de-extinct animals could theoretically (at least on paper) have a greater chance of consideration within the European context. However, the article will argue that given past interpretative practices surrounding such provisions in Europe, without institutional change within patent law, such ethical considerations are unlikely to be significant hurdles to patenting such technology in Europe (contingent, of course, on how the science develops). 

This analysis has important practical and theoretical significance. From a practical perspective, the article highlights the main patentability questions within European law that will arise in light of de-extinction projects, aiming to provide an important reference point within the de-extinction debate. At a theoretical level, it identifies aspects of European biotechnological patent law that will require further clarification should de-extinction come to fruition, such as definitional questions surrounding the patentability of cloned animals and transgenic animals not created for medical research purposes. As will be demonstrated, these issues also have broader significance for advanced biotechnologies more generally. 

In conducting this analysis, the article is structured as follows: Part I demonstrates why patents are relevant and could be applied for in the context of de-extinction projects; Part II then briefly maps the scientific avenues that are being used in de-extinction projects setting the foundation for the legal analysis which follows; Part III provides a detailed assessment of the potential patentability of de-extinct animals, examining questions of patent eligible subject matter; the potential applications of the exclusions from patentability under Art 53 EPC to animals created in the de-extinction context; and whether such animals would meet the patent novelty requirement. Part IV concludes by highlighting the possible effects, and positive/negative ramifications, of patenting such animals and elucidates the chasm between the cultural and symbolic significance held by such animals, and their lack of differential treatment in the patent law sphere.