Diamond v. Chakrabarty
Encyclopedia
Diamond v. Chakrabarty, , was a United States Supreme Court case dealing with whether genetically modified organism
s can be patent
ed.
, working for General Electric
, had developed a bacterium (derived from the Pseudomonas
genus
) capable of breaking down crude oil, which he proposed to use in treating oil spill
s. He requested a patent for the bacterium in the United States but was turned down by a patent examiner, because the law dictated that living things
were not patentable.
The Board of Patent Appeals and Interferences
agreed with the original decision; however, the United States Court of Customs and Patent Appeals
overturned the case in Chakrabarty's favor, 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.
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:
He wrote that:
Regarding the scope of the original legislation, he wrote:
Finding that Congress had intended patentable subject matter to "include anything under the sun that is made by man," he concluded that:
, Thurgood Marshall
, and Lewis Franklin Powell
.
Brennan's dissent focused on the argument that there is evidence in the legislative record that the United States Congress
did not intend living organisms to be patented.
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:
Therefore:
And with regard to the specifics of the 1970 act:
Genetically modified organism
A genetically modified organism or genetically engineered organism is an organism whose genetic material has been altered using genetic engineering techniques. These techniques, generally known as recombinant DNA technology, use DNA molecules from different sources, which are combined into one...
s can be patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
ed.
Background
Genetic engineer Ananda Mohan ChakrabartyAnanda Mohan Chakrabarty
Ananda Mohan Chakrabarty , Ph.D. is an Bengali American microbiologist, scientist, and researcher, most notable for his work in directed evolution and his role in developing a genetically engineered organism using plasmid transfer while working at GE....
, working for General Electric
General Electric
General Electric Company , or GE, is an American multinational conglomerate corporation incorporated in Schenectady, New York and headquartered in Fairfield, Connecticut, United States...
, had developed a bacterium (derived from the Pseudomonas
Pseudomonas
Pseudomonas is a genus of gammaproteobacteria, belonging to the family Pseudomonadaceae containing 191 validly described species.Recently, 16S rRNA sequence analysis has redefined the taxonomy of many bacterial species. As a result, the genus Pseudomonas includes strains formerly classified in the...
genus
Genus
In biology, a genus is a low-level taxonomic rank used in the biological classification of living and fossil organisms, which is an example of definition by genus and differentia...
) capable of breaking down crude oil, which he proposed to use in treating oil spill
Oil spill
An oil spill is the release of a liquid petroleum hydrocarbon into the environment, especially marine areas, due to human activity, and is a form of pollution. The term is mostly used to describe marine oil spills, where oil is released into the ocean or coastal waters...
s. He requested a patent for the bacterium in the United States but was turned down by a patent examiner, because the law dictated that living things
Organism
In biology, an organism is any contiguous living system . In at least some form, all organisms are capable of response to stimuli, reproduction, growth and development, and maintenance of homoeostasis as a stable whole.An organism may either be unicellular or, as in the case of humans, comprise...
were not patentable.
The Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
agreed with the original decision; however, the United States Court of Customs and Patent Appeals
United States Court of Customs and Patent Appeals
The United States Court of Customs and Patent Appeals is a former United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes.-History:...
overturned the case in Chakrabarty's favor, 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 favor of Chakrabarty, and upheld the patent, holding that:- A live, human-made micro-organism is patentable subject matterPatentable subject matterPatentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries suggest that certain subject matter is or is not something for which a patent should be granted.Together with novelty, inventive step...
under . Respondent's micro-organism constitutes a "manufacture" or "composition of matterComposition of matterIn United States patent law, a composition of matter is one of the four principal categories of things that may be patented. The other three are a process , a machine, and an article of manufacture...
" within that statute.
Ruling
Chief Justice Warren E. BurgerWarren E. Burger
Warren Earl Burger was the 15th Chief Justice of the United States from 1969 to 1986. Although Burger had conservative leanings, the U.S...
wrote the decision, and was joined by Potter Stewart
Potter Stewart
Potter Stewart was an Associate Justice of the United States Supreme Court. During his tenure, he made, among other areas, major contributions to criminal justice reform, civil rights, access to the courts, and Fourth Amendment jurisprudence.-Education:Stewart was born in Jackson, Michigan,...
, Harry Blackmun
Harry Blackmun
Harold Andrew Blackmun was an Associate Justice of the Supreme Court of the United States from 1970 until 1994. He is best known as the author of Roe v. Wade.- Early years and professional career :...
, William Rehnquist
William Rehnquist
William Hubbs Rehnquist was an American lawyer, jurist, and political figure who served as an Associate Justice on the Supreme Court of the United States and later as the 16th Chief Justice of the United States...
, and John Paul Stevens
John Paul Stevens
John Paul Stevens served as an Associate Justice of the Supreme Court of the United States from December 19, 1975 until his retirement on June 29, 2010. At the time of his retirement, he was the oldest member of the Court and the third-longest serving justice in the Court's history...
.
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 therefore, subject to the conditions and requirements of this title."
He wrote that:
- We have cautioned that courts "should not read into the patent laws limitations and conditions which the legislature has not expressed." United States v. Dubilier Condenser Corp, .
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.
Finding that Congress had intended patentable subject matter to "include anything under the sun that is made by man," 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 WhiteByron White
Byron Raymond "Whizzer" White won fame both as a football halfback and as an associate justice of the Supreme Court of the United States. Appointed to the court by President John F. Kennedy in 1962, he served until his retirement in 1993...
, Thurgood Marshall
Thurgood Marshall
Thurgood Marshall was an Associate Justice of the United States Supreme Court, serving from October 1967 until October 1991...
, and Lewis Franklin Powell
Lewis Franklin Powell, Jr.
Lewis Franklin Powell, Jr. was an Associate Justice of the Supreme Court of the United States. He developed a reputation as a judicial moderate, and was known as a master of compromise and consensus-building. He was also widely well regarded by contemporaries due to his personal good manners and...
.
Brennan's dissent focused on the argument that there is evidence in the legislative record that the United States Congress
United States Congress
The United States Congress is the bicameral legislature of the federal government of the United States, consisting of the Senate and the House of Representatives. The Congress meets in the United States Capitol in Washington, D.C....
did not intend living organisms to be patented.
- 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
Plant Patent Act
The Plant Patent Act of 1930 is a United States federal law spurred by the work of Luther Burbank....
and 1970 Plant Variety Protection Act
Plant Variety Protection Act
The Plant Variety Protection Act of 1970 , 7 U.S.C. §§ 2321-2582, is an intellectual property statute in the United States. The PVPA gives breeders up to 25 years of exclusive control over new, distinct, uniform, and stable sexually reproduced or tuber propagated plant varieties...
, 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 bacteriaBacteriaBacteria are a large domain of prokaryotic microorganisms. Typically a few micrometres in length, bacteria have a wide range of shapes, ranging from spheres to rods and spirals...
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.
See also
- List of United States Supreme Court cases, volume 447
- Genetic engineering in the United StatesGenetic engineering in the United StatesGenetic engineering in the United States is the largest grower of commercial crops in the world and there is some opposition to it.Monsanto, based in Creve Coeur, Missouri in the United States, is the leading producer of genetically engineered seed; it sells 90% of the world's GE...
External links
- Oral Argument mp3 audio