Intellectual Property, Pages 649–654

Diamond v. Chakrabarty

Supreme Court of the United States, 1980

Facts:

Chakrabarty genetically engineered bacteria capable of breaking down multiple components of crude oil, an ability not naturally possess by any bacteria. He then filed a patent application for the process of producing the bacteria, for floating a material on water with the bacteria, and for the bacteria themselves.

The patent examiner allowed the first two claims, but rejected the third for being "products of nature" and unpatentable as living things.

Procedural History:

  • The Patent Office Board of Appeals affirmed the examiner's rejection for being living things.

    Reasoning:

    Congress's legislative history in allowing asexually reproduced plants shows that it did not intend to cover things like these microorganisms.

  • The Court of Customs and Patent Appeals reversed by a divided vote.

    Reasoning:

    Case law says that "the fact that microorganisms . . . are alive . . . [is] without legal significance" for patent law.

Issue:

Is a live, human-made microorganism patentable?

Rule:

35 U.S.C. § 101

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Reasoning:

By using the terms "any" "manufacture" or "composition of matter", Congress plainly intended patent laws to have wide scopes. When Thomas Jefferson wrote this language, he had the philosophy that "ingenuity should receive a liberal encouragement." Manifestations of nature available to all, like gravity or new wild plants are still not patentable, but respondent's microorganism clearly is. It is a not a natural phenomenon; it is product of human ingenuity.

This is unlike the past case of Funk, about interbreeding legumes, where the patentee only discovered "some of the handiwork of nature."

Although Congress passed laws specifically giving plants separate protection, that is because plants were thought to be products of nature, even when artificially bred. Plants' uniquenesses are also very hard to describe in writing. Congress never said § 101 excluded living things. That is not the relevant distinction. The important distinction is between natural and man-made things. Even though Congress obviously did not foresee genetic engineering in 1952, it is the courts' duty saw what the law is once Congress has spoken. In doing so, it is unambiguous that falls within Congress's law.

While some are concerned that genetic engineering may bring doom to humanity, this should not be considered here. Granting or denying this patent will not stop genetic research. The courts are also not competent enough to determine how legitimate such fears are. It is the responsibility of the other branches of government to address such issues. If Congress wants to exclude living things, it should pass a law saying so.

Holding:

Yes, live, human-made microorganisms are patentable. Affirmed.

Takeaway:

Natural phenomena are not patentable; only man-made things are.


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