Journal of Intellectual Property Rights Vol 20, November 2015, pp 349-362 Gene Patenting vis-a-vis Notion of Patentability Abhijeet Kumar †1 and Adrija Mishra 2 †1 Patna High Court, 1/23, Vasudha Bhawan, Indrapuri Rd. No. 1, Patna-800 024, Bihar 2 Odisha High Court, Qtr No. VI-C, 3/2, Unit-I, Bhubhneshwar-751 009, Odisha Received 31 January 2015; accepted 14 October 2015 Post Diamond v Chakraborthy, science has developed so much that the demand for enhancing the scope of patent protection has been increasing year after year. The most recent demand from the biotech labs is for giving protection to isolated genes, under patent law in respective jurisdiction. The paper mainly aims to answer the question that “whether the patentability criteria, as the jurisprudence regarding it exists today, are enough to evaluate the standard of patentability of isolated genes or not”. The authors have examined the laws of various jurisdictions in this regard and have analysed the ‘invention’ of isolated gene with respect to the tests of patentability, to determine if it fails or sustains the same. Arguments based on ethical considerations, which opposes the granting of patent protection to isolated genes, have been put forth for testing of validity. The requirement of enabling disclosure has also been tested, which is must to be filled with the application for the grant of the patent. The research leads to the finding that the present law is insufficient for extending the protection of patent to isolated genes, and thus a dire need of a sui generis protection is increasing. Keywords: Patentability, intellectual property law, biotechnology, gene patenting, POSA, genetics, TRIPS Since the advent of the system of patents, the world has experienced a plethora of changes. Being an essential aspect of intellectual property laws, it has boosted up man’s thirst to discover and invent. A patent is considered to be a contract between the government and the inventor, 1 wherein the inventor is promised to benefit from the fruits his invention bears for a limited period of time, in exchange for the complete disclosure of the invention to the public. 2 It began with the system of letter patents and today it has reached an age where efforts are being made to patent life forms. 3 The advent of the system of patents in the sphere of biotechnology has been a major development and has greatly encouraged inventions in this sphere to touch great heights. However, it has raised few eyebrows from a socio-ethical point of view. 4 It has been greatly criticised and this has been a major reason for the ongoing debates and dilemma faced by the courts in granting patent. It has been argued that biotechnological inventions involve “natural processes” and hence are “products of nature”. There is thus no novelty, no inventive step, but mere bringing into lights a fact which already existed and hence they shouldn’t be granted a patent. 5 Before moving on to the technicalities involved, it is essential to understand the term “biotechnology” and “genes”. Biotechnology refers to applying science and engineering on a living organism or parts or products of a living organism in their natural or modified form. 6 The United Nations, Convention on Biological Diversity defines it as any technological application that uses biological systems, living organisms, or derivatives thereof, to make or modify products or processes for specific use. 7 It embraces all subject matters involving living organisms. Genes or genetic engineering form a part of this larger whole. Genes being an abstract concept can be understood differently in different contexts. 8 As the Watson-Crick definition goes, genes have been defined as those which reside in the chromosome as a linear sequence of deoxyribonucleotides. 9 They help in the synthesis of information which leads to the formation of proteins which are the building blocks of cell. There have been various arguments in the patentability of genes. As pointed out earlier by the authors, patenting human genes is considered to be morally wrong by many jurists. It is also stated that by allowing to patent human genes, people are being treated as commodities. This has been given the name of “modern slavery”. 10 It has also been said that patenting such materials would restrict the area of research and thus it wouldn’t be in the best interest of the society, because it might lead to a monopolistic situation. It is opinion of various academicians, based _______________ †Corresponding author: Email: abhijeetkumar12991@gmail.com