III. PATENTABILITY OF PRODUCTS OF NATURE

Products of nature as they are found in their natural environment are generally not patentable.[25] “An inventor who wishes to patent a chemical product obtained from nature must avoid the natural products exception.”[26] One way to avoid the natural product exception is to synthesize the natural compound with a molecular structure that is somewhat different from the molecular structure of natural product while retaining the benefits of the natural products.[27] A second way of avoiding the natural product exception is to purify the naturally occurring substance.[28] However, mere purification is usually not enough to make the natural compound patentable, the purified product must produce “unexpected results”.[29]

Ex Parte Gray[30] is an illustrative case with regard to patentability of purified products of nature. In that case a natural dye was purified making the color of the dye more vivid[31]. The court held that mere purification was not enough to make the dye patentable. The applicant could not show superior quality or a substantial advantage of the purified dye over unpurified dye and therefore the dye was unpatentable as being a mere product of nature.[32] On the other hand, in Parke-Davis & Co. v. H.K. Mulford & Co.[33] the patentability of purified adrenaline[34] from suprarenal glands of animals was at issue. Before the patentee’s purified adrenaline was brought to market, suprarenal glands of animals were dried up, powdered, and mixed in an aqueous solution and administered to patients mainly for lowering blood pressure.[35] The court held that the purified adrenaline derived from the adrenal glands of animals was patentable.[36] The court took into consideration the fact that before the patentee’s success in purifying adrenalin, no one else in the field had been successful in discovering and purifying the active ingredient that had the desired effects.[37] The court emphasized that the patentee’s work was meritorious, and because the patentee was successful in producing adrenaline in practically pure form, the court was satisfied the patent was valid and it covered the invention.[38] The court’s reasoning in upholding the patent was that pure adrenaline does not exist in nature, and further, pure adrenaline was more “efficient and constant in action, . . . which could be used without danger of bringing deleterious and injurious bodies into contact with . . . the patient’s body.”[39] In other words purified adrenaline was held to be patentable because it had been difficult to discover and purify and also because the purified adrenalin showed unexpected results; mainly, adrenaline in pure and concentrated form was more efficient and reduced injury to patients. In contrast, the purified dye of Ex Parte Grey did not produce unexpected results; mainly, there was no superior quality or substantial advantage over unpurified dye, albeit the increased vividness in color.

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