The Division also considered the issues of "morality" and ordre public, applying the new balancing test advanced by the Board.(109) The Division considered the invention's usefulness as a cancer research tool and concluded that the invention's usefulness to mankind outweighed animal suffering and risks to the environment.(110) The Division decided that the Onco-mouse's "usefulness to mankind [could not] be denied.
The issues considered in Decision T 19/90 were applied to transgenic plants in February, 1995, when the recently established Technical Board for biotechnology matters (Bio-Technical Board) handed down the landmark Decision T 356/93.(112) Although Decision T 356/93 may be interpreted to not contradict Decision T 19/90, unfortunately overrules the Division's final decision regarding T 19/90, and may have dire consequences for the Harvard Onco-mouse patent.(113)
The most distressing effect of the Bio-Technical Board's new definition is its overruling of the Examining Division's decision following Decision T 19/90 declaring the Harvard Onco-mouse patentable.(164) The product claim in T 19/90 related to a transgenic non-human mammalian animal with a activated onco-gene integrated into its chromosomes.165 Applying the new logic of Decision T 356/93 to that situation, the Animal itself would now be unpatentable because, although the initial steps of introducing the foreign DNA into the mouse oocyte may possibly be considered a microbiological process, the subsequent steps involving mouse differentiation and reproduction would result in unpatentable products (mice) produced by essentially biological processes.