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THE TROUBLE WITH MICROBES, OR WHETHER A YEAST IS MORE LIKE A BEE OR A SALMON?

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  7. THE TROUBLE WITH MICROBES, OR WHETHER A YEAST IS MORE LIKE A BEE OR A SALMON?

Published Date: March 4, 2024

We’re fond of the “tool kit” approach to Intellectual Property. This is where we encourage our clients to view IP not through the lens of a set of rights to be obtained for their own sake, but instead as a series of legal tools which can be applied to a number of different situations and for different purposes (in much the same way that a hammer can be applied to the problem of both setting and removing a nail, shaping an iron bar or breaking a rock). This purpose-driven approach is well illustrated by some of the common issues that clients may have in protecting the value of microbial inventions or products.

For clients with truly novel and inventive microbial products and processes, the first thing that we would investigate would be the possibility of obtaining patent protection. Here our Patents Act provides that a patent shall not be granted “…for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process.”. This, though stated in the negative, effectively means that microbes used in industrially-useful ways, and microbiological products and processes, are indeed patentable so long as they adhere to the ordinary requirements of patentability. However, our Act (read with the relevant Regulations) also provides that, where a patent makes use of a novel microorganism that cannot be made or obtained using the specification, a sample must be deposited with an international depositary authority in terms of the Budapest treaty. This brings in complications in relation to regulatory compliance, as there are no international depositary authorities in South Africa, which necessitates the export of a sample. And, where such a sample is considered an Indigenous Biological Resource (IBR) in terms of our National Environmental Management: Biodiversity Act (NEMBA), then a permit must first be applied for.

Where a microbe is useful as an agricultural remedy or stock remedy in terms of our Fertilizers, Farm Feeds, Agricultural Remedies and Stock Remedies Act (generally called “Act 36” for lack of a better acronym than FFFARSRA), then it must be registered before it can be sold for such a purpose. Although not explicitly spelled out in the Act, this registration also provides a strong but narrow form of protection to the owner, as no other identical formulation to one which is already registered may itself be registered without a declaration from the holder of the existing registration allowing them to do so. The Act and associated Regulations do not, however, provide guidance on how to interpret the term “identical” in respect of the formulation, although we tentatively suggest that this should be interpreted in practice as ‘substantially identical’ rather than ‘literally the same in all respects’.

South African patent law provides for the protection of an isolated microorganism per se, provided that there is a described technical effect for the use of the isolated microorganism provided in the patent application, and that the remaining patentablility requirements including novelty and inventiveness are complied with. However, for many microbes, neither patent nor Act 36 registration are an option for protecting the rights of the owner. This is most generally the case where an endemic, well-known microorganism (such as yeast or lactobacillus) has been isolated for use in a known method of production of foods and beverages. Skipping the application of the NEMBA to such microbes, the would-be owner may have to reach way back into our legal past and apply principles of Roman-Dutch law to the question of domesticated animals. The lovely (translated) wording of Book 2, Title 1, section 14 of the Institutes of Justinian, quoted with approval in our case law, provides the following:

“Bees again are naturally wild; hence if a swarm settles on your tree, it is no more considered yours, until you have hived it, than the birds which build their nests there, and consequently if it is hived by someone else, it becomes his property. So too any one may take the honeycombs which bees may chance to have made, though, of course, if you see someone coming on your land for this purpose, you have a right, to forbid him entry before that purpose is effected. A swarm which has flown from your hive is considered to remain yours so long as it is in your sight and easy of pursuit: otherwise it belongs to the first person who catches it.”

This is in contrast with Book 2, Title 1, section 12, which deals with wild animals (such as birds and fish). Such creatures, which are incapable of domestication, remain the property of their captor “so long as it is completely under your control; but so soon as it has escaped from your control, and recovered its natural liberty, it ceases to be yours, and belongs to the first person who subsequently catches it. It is deemed to have recovered its natural liberty when you have lost sight of it, or when, though it is still in your sight, it would be difficult to pursue it.”.

Although Roman-Dutch law does not explicitly classify microorganisms as animals, it is arguable that its adaptability allows legal professionals to navigate circumstances involving these tiny life forms within the broader legal framework. Lacking any other remedies in law, then, the would-be microbiological entrepreneur could consider whether their specific microbe is more like a bee or a salmon – that is to say, whether they are able to domesticate it and thus retain ownership of the domesticated creature even when it is not in sight. Our view here is that the act of isolation and culture of a specific strain (i.e. one that can be distinguished from other cultures of the same species) provides the necessary step of capturing and ‘hiving’ the organism. It can then be dealt with in the manner of ordinary property, although its products (if used by another) naturally belong to the user.

Lacking a single, comprehensive legal answer to the question of ownership and Intellectual Property in respect of microorganisms, the inventor, researcher and entrepreneur must put together answers suitable for their specific circumstances from the various parts of law which overlap this corner of the natural world. In doing so, they illustrate the usefulness of a broad, purpose-driven approach to IP law.

Thomas Schmidt
Senior Associate | Patent Attorney

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