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Diamond v. Chakrabarty
447 U.S. 303 (1980)
was a
United States Supreme Court
case dealing with whether
genetically modified
micro-organisms can be
patented.
Background
Genetic engineer Ananda Mohan
Chakrabarty, working for
General Electric, had
developed a
bacterium capable of breaking
down
crude oil, which he proposed
to use in treating
oil spills. He requested a
patent for the bacterium in the
United States but was turned down
by a patent examiner, who believed
that living things were not
patentable.
The
Patent Office Board of Appeals
agreed with the original decision;
however, the
Court of Customs and Patent
Appeals overturned the case in
Chakrabarty's favour, writing that
"the fact that micro-organisms
are alive is without legal
significance for purposes of the
patent law." Sidney A.
Diamond, Commissioner of Patents
and Trademarks, appealed to the
Supreme Court.
The Supreme Court case was
argued on March 17, 1980 and
decided on June 16, 1980.
Decision
In a 5-4 ruling, the court
ruled in favour of Chakrabarty,
and upheld the patent, holding
that:
- A live, human-made
micro-organism is patentable
subject matter under [Title 35
U.S.C.] 101. Respondent's
micro-organism constitutes a
"manufacture" or "composition of
matter" within that statute.
Ruling
Chief Justice
Warren E. Burger wrote the
decision, and was joined by
Potter Stewart,
Harry Blackmun,
William Rehnquist, and
John Paul Stevens.
Burger wrote that the question
before the court was a narrow one
- the interpretation of 35 U.S.C.
101, which says:
- "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."
He wrote that:
- We have [in earlier
ruling 289 U.S. 178] cautioned
that courts "should not read
into the patent laws limitations
and conditions which the
legislature has not expressed."
Regarding the scope of the
original legislation, he wrote:
- In choosing such
expansive terms as "manufacture"
and "composition of matter,"
modified by the comprehensive
"any," Congress plainly
contemplated that the patent
laws would be given wide scope.
And so he concluded that:
- Judged in this light,
respondent's micro-organism
plainly qualifies as patentable
subject matter. His claim is ...
to a nonnaturally occurring
manufacture or composition of
matter - a product of human
ingenuity.
Dissent
The dissenting opinion was
written by
William J. Brennan, who was
joined by
Byron White,
Thurgood Marshall, and
Lewis Franklin Powell.
Brennan's dissent focused on
the argument that Congress had not
anticipated genetic engineering
when the patent law was enacted:
- We must be careful to
extend patent protection no
further than Congress has
provided.
Brennan noted that "we do not
confront a complete legislative
vacuum", and commented on the 1930
Plant Patent Act and 1970 Plant
Variety Protection Act, which
explicitly allow patents for
plants in certain cases:
- The Acts evidence
Congress' understanding, at
least since 1930, that 101 does
not include living organisms. If
newly developed living organisms
not naturally occurring had been
patentable under 101, the plants
included in the scope of the
1930 and 1970 Acts could have
been patented without new
legislation.
Therefore:
- Because Congress thought
it had to legislate in order to
make agricultural "human-made
inventions" patentable and
because the legislation Congress
enacted is limited, it follows
that Congress never meant to
make items outside the scope of
the legislation patentable.
And with regard to the
specifics of the 1970 act:
- Congress specifically
excluded bacteria from the
coverage of the 1970 Act ... The
fact is that Congress, assuming
that animate objects as to which
it had not specifically
legislated could not be
patented, excluded bacteria from
the set of patentable organisms.
