Diamond v. Chakrabarty
447 U.S. 303 (1980)
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Rule of Law:
A live, human-made micro-organism is patentable subject matter under 35 U.S.C. § 101. The relevant distinction for patentability is not between living and inanimate things, but between products of nature and human-made inventions.
Facts:
- Ananda Chakrabarty, a microbiologist working for General Electric, developed a genetically engineered bacterium from the genus Pseudomonas.
- The new bacterium contained at least two stable energy-generating plasmids, each providing a separate pathway for degrading hydrocarbons.
- This human-made bacterium is capable of breaking down multiple components of crude oil.
- This property is not possessed by any naturally occurring bacteria.
- Due to its unique capability, the invention is believed to have significant value for the treatment of oil spills.
Procedural Posture:
- Chakrabarty filed a patent application which included claims for the method of producing the bacteria, an inoculum containing the bacteria, and the bacteria themselves.
- The patent examiner allowed the process and inoculum claims but rejected the claims for the bacterium itself, reasoning that micro-organisms are 'products of nature' and not patentable subject matter as living things under 35 U.S.C. § 101.
- Chakrabarty, as appellant, appealed to the Patent Office Board of Appeals, which affirmed the examiner's rejection on the ground that living things were not intended to be covered by § 101.
- Chakrabarty then appealed to the U.S. Court of Customs and Patent Appeals, which reversed the Board's decision, holding that the fact that the micro-organisms were alive was legally insignificant.
- The Acting Commissioner of Patents and Trademarks, Sidney A. Diamond, as petitioner, sought a writ of certiorari from the U.S. Supreme Court, which was granted.
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Issue:
Does a live, human-made micro-organism constitute a 'manufacture' or 'composition of matter' under 35 U.S.C. § 101, making it patentable subject matter?
Opinions:
Majority - Chief Justice Burger
Yes. A live, human-made micro-organism is patentable subject matter because it qualifies as a 'manufacture' or 'composition of matter' under § 101. The court's reasoning is that the plain language of § 101 is expansive, and legislative history shows Congress intended patent laws to have a wide scope, including 'anything under the sun that is made by man.' The key distinction for patentability is not between living and non-living things, but between products of nature (which are not patentable) and human-made inventions. Chakrabarty's bacterium is not a natural phenomenon but a product of human ingenuity with 'markedly different characteristics from any found in nature' and a new utility. The court rejected the argument that specific laws for patenting plants (the Plant Patent Act and Plant Variety Protection Act) implied that other living things were excluded, stating those acts addressed other specific obstacles to patenting plants. Policy arguments about the potential dangers of genetic engineering are matters for Congress, not the courts, to decide.
Dissenting - Justice Brennan
No. The patent laws should not be extended to cover living organisms without a clear directive from Congress. The dissent argues that the Court should proceed cautiously when extending patent rights into areas unforeseen by Congress. The passage of the 1930 Plant Patent Act and the 1970 Plant Variety Protection Act strongly suggests that Congress understood that § 101 did not cover living organisms; otherwise, those acts would have been unnecessary. Furthermore, the 1970 Act specifically excluded bacteria from its coverage, indicating a legislative intent to withhold patent protection. The dissent concludes that broadening the patent laws to include living organisms is a significant policy decision that should be made by Congress, not the judiciary.
Analysis:
This landmark decision fundamentally enabled the patenting of biotechnology inventions and is credited with fueling the growth of the modern biotech industry. By establishing that 'anything under the sun that is made by man' is potentially patentable, the ruling opened the door for patents on a wide array of life forms, from genetically modified cells and seeds to transgenic animals. The case solidified the principle that the crucial distinction for patentable subject matter is between products of nature and human-made inventions, a standard that continues to be central in patent law. This precedent provides the legal foundation for protecting investment in biotechnological research and development, while also sparking ongoing ethical and legal debates over the patenting of life.
