If a patentee actually expresses recombinant gene-X in organism-A does that give him the right to also claim this gene-X in other organisms?

All other organisms? If not how broadly? Too broad sounds unfair: Just because you successfully expressed said gene-X in organism-A does not mean expressing it in organism-B is a task of trivial difficulty.

e.g. If I insert a gene into one bacterium do I get to claim the patent over all bacteria?

I know patents are messy and there's probably a lot of case by case variation. But are there any general principles here?

e.g. Are there past examples of one Biotech Company expressing a foreign gene via organism-A to sell a metabolite and another Company also expressing the same gene via organism-B?

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    I think this is more suitable for Law SE. I doubt this patent system works now, since it takes less than a week of work to express an arbitrary gene in E. coli if you are lucky with the protein solubility.
    – March Ho
    Aug 11, 2015 at 8:30
  • @MarchHo: Thanks. Have things really gotten that simple? e.g. Can I take a gene from a database, insert the DNA from the native organism using a plasmid vector into E Coli & expect it to synthesize the products?
    – curious_cat
    Aug 11, 2015 at 8:52
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    If by database you mean a database of storage plasmids, sure. Even taking into account PCR cloning the gene from cDNA, it can take under a week if you are lucky.
    – March Ho
    Aug 11, 2015 at 10:09
  • Yeah, I think this would be better addressed on Law SE. See related article Isolating Genes is no Longer Sufficient to Get a Patent in the United States.
    – jzx
    Aug 11, 2015 at 10:25
  • @MarchHo By database I meant, say someone has identified a plant gene implicated in making the enzyme that produces a metabolite & I want to now get E Coli to express this metabolite. For simplicity let's assume that the substrate this enzyme acts on is already present in E Coli.
    – curious_cat
    Aug 11, 2015 at 15:27

1 Answer 1


Patentability requires both that the patent application enables others to implement the claimed invention, and that the invention is novel and non-obvious in light of the prior art.

Enablement (which is the part you've asked about) is not determined based on the actual success of expressing the recombinant gene, but rather on whether the application describes how to achieve this expression without undue experimentation. So, if you describe a technique that can be easily applied to organism-B, then you've enabled expressing that gene in organism-B. If, on the other hand, expression in organism-B is not "a task of trivial difficulty" as you put it, then expression in organism-B is not enabled and could not be claimed.

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