Diamond v. Chakrabarty

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Diamond v. Chakrabarty
Seal of the United States Supreme Court.svg
Argued March 17, 1980
Decided June 16, 1980
Full case name Sidney A. Diamond, Commissioner of Patents and Trademarks, v. Ananda M. Chakrabarty, et al.
Citations 447 U.S. 303 (more)
100 S. Ct. 2204, 65 L. Ed. 2d 144, 206 U.S.P.Q. 193
Prior history Application of Bergy, 596 F.2d 952 (C.C.P.A. 1979); cert. granted, 444 U.S. 924 (1979)
Holding
Living, man-made micro-organism is patentable subject matter as a "manufacture" or "composition of matter" within the meaning of the Patent Act of 1952. The fact that the organism sought to be patented is alive is no bar to patentability. Decision of the Court of Customs & Patent Appeals affirmed.
Court membership
Case opinions
Majority Burger, joined by Stewart, Blackmun, Rehnquist, Stevens
Dissent Brennan, joined by White, Marshall, Powell
Laws applied
Patent Act of 1952, specifically 35 U.S.C. § 101

Diamond v. Chakrabarty, 447 U.S. 303 (1980), was a United States Supreme Court case dealing with whether genetically modified organisms can be patented.[1]

Background[edit]

Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed a bacterium (derived from the Pseudomonas genus and now known as Pseudomonas putida) capable of breaking down crude oil, which he proposed to use in treating oil spills. General Electric filed a patent application for the bacterium in the United States listing Chakrabarty as the inventor,[2] but the application was rejected by a patent examiner, because under patent law at that time it was generally understood that living things were not patentable subject matter under Section 101 of Title 35 U.S.C..[3]

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. The patent was granted by the USPTO on Mar 31, 1981.[2]

Decision[edit]

In a 5–4 ruling, the court ruled in favor of Chakrabarty, holding that:

A live, human-made micro-organism is patentable subject matter under 35 U.S.C. § 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute.

Ruling[edit]

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 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, 289 U.S. 178 (1933).

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[edit]

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 there is evidence in the legislative record that the United States Congress 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 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.

References[edit]

See also[edit]

Further reading[edit]

  • Lumelsky, Anna (2005), "Diamond v. Chakrabarty: Gauging Congress’s Response to Dynamic Statutory Interpretation by the Supreme Court", University of San Francisco Law Review 39 (3): 641 .
  • Palombi, Luigi (2004), "The Patenting of Biological Materials in the Context of TRIPS", PhD thesis (Sydney, Australia: University of New South Wales) .

External links[edit]

  • Text of Diamond v. Chakrabarty, 447 U.S. 303 (1980) is available from:  Findlaw  Justia