Diamond v. Chakrabarty: Difference between revisions

Genetic engineer [[Ananda Mohan Chakrabarty]], working for [[General Electric]], 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 spill]]s. General Electric filed a patent application for the bacterium in the United States listing Chakrabarty as the inventor,<ref name=patentUS4259444 /> but the application was rejected by a patent examiner, because under patent law at that time, [[organism|living things]] were generally understood to not be [[Patentable subject matter in the United States|patentable subject matter]] under 35 U.S.C. § 101.<ref name=Kevles1994 /><ref name="UNCTAD">{{Cite web|title=Diamond v. Chakrabarty, 447 U.S. 303 (1980)|url=https://unctad.org/ippcaselaw/sites/default/files/ippcaselaw/2020-12/Diamond%20v.%20Chakrabarty%2C%20447%20U.S.%20Supreme%20Court%20%20303%20%281980%29_0.pdf|url-status=live|access-date=October 3, 2021|website=[[United Nations Conference on Trade and Development]] -– Intellectual Property Unit|archive-url=https://web.archive.org/web/20210503012742/https://unctad.org/ippcaselaw/sites/default/files/ippcaselaw/2020-12/Diamond%20v.%20Chakrabarty%2C%20447%20U.S.%20Supreme%20Court%20%20303%20%281980%29_0.pdf |archive-date=2021-05-03 }}</ref>

Writing for the majority, Chief Justice [[Warren E. Burger]] began by noting that 35 U.S.C. § 101 allowed inventors to obtain patents for a "manufacture" or "composition of matter". The majority noted that while these words indicated that Congress intended for the patent laws to be given a "broad scope", this scope was not unlimited and that, under the Court's precedents, "laws of nature, physical phenomena, and abstract ideas" were not patentable. However, the Court held that these precedents were inapplicable to Chakrabarty's case as he was not trying to patent a "natural phenomena" but rather a human-made bacterium that he, himself, had developed.<ref name="LN">{{Cite web|title=Diamond v. Chakrabarty -– 447 U.S. 303, 100 S. Ct. 2204 (1980)|url=https://www.lexisnexis.com/community/casebrief/p/casebrief-diamond-v-chakrabarty|url-status=live|access-date=October 3, 2021|website=[[LexisNexis]]|archive-url=https://web.archive.org/web/20211003171757/https://www.lexisnexis.com/community/casebrief/p/casebrief-diamond-v-chakrabarty |archive-date=2021-10-03 }}</ref> The majority contrasted this outcome with the one reached nearly 50 years prior in ''[[Funk Bros. Seed Co. v. Kalo Inoculant Co.]]'', where the Court had rejected a patent application for the discovery of a naturally occurring bacterium that could be used to improve crops. Unlike the patentee in ''Funk Bros.'', the Supreme Court here held that Chakrabarty had not merely discovered the bacteria's existence, he had created it himself and adapted it to a particular purpose.<ref name="UNCTAD" /><ref name=Justia />

Justice [[William J. Brennan Jr.]], joined by Justices [[Byron White]], [[Thurgood Marshall]], and [[Lewis F. Powell Jr.]], dissented from the Court's ruling. Looking at the legislative history of the patent laws, Justice Brennan concluded that Congress had demonstrated an intent to exclude living organisms from the scope of the country's patent laws. Justice Brennan also expressed concern that the Court was extending patent protections into areas not expressly authorized by Congress and that this constituted an inappropriate extension of monopoly patent power.<ref>{{Cite journal|last=Weiss|first=Edith|date=July 1980|title=UNITEDUnited STATESStates: SUPREMESupreme COURTCourt DECISIONDecision INin DIAMONDDimond v. CHAKRABARTYChakrabarty (Biological Research; Genetic Engineering; (Patentability of Microorganisms)|url=https://www.jstor.org/stable/20692193|journal=[[International Legal Materials]]|volume=19|issue=4|pages=981–991|doi=10.1017/S0020782900039334|jstor=20692193|vias2cid=JSTOR249007890}}</ref><ref name=Justia />

In the decades following the Supreme Court's ruling, commentators have classified ''Diamond v. Chakrabarty'' as an important legal decision, particularly with respect to the patent laws and the biotechnology industry. In 2018, [[Time (magazine)|''Time'']] identified the decision as one of 25 important moments in American history, with Professor [[Gerardo Con Diaz]] remarking that the decision allowed "inventors at private and public institutions alike to obtain patents for genetically modified organisms — from plants and animals for laboratory research, to many foods available in supermarkets today" and allowed biotechnology firms to protect their developments in new ways.<ref>{{Cite magazine|title=The 25 Moments From American History That Matter Right Now|url=https://time.com/5314430/american-history-moments-matter-today/|access-date=2021-10-02|magazine=Time|language=en}}</ref> Writing for ''[[IP Watchdog]]'' on the decision's 30th anniversary, Gene Quinn called the decision a "turning point for the biotech industry" and praised the Court's ruling as "emblematic of the need for an expansive view of what is patentable subject matter."<ref name="IPW" >{{Cite web|date=2010-06-16|title=June 16, 2010: 30th Anniversary of Diamond v. Chakrabarty|url=https://www.ipwatchdog.com/2010/06/16/june-16-2010-30th-anniversary-of-diamond-v-chakrabarty/id=11268/|access-date=2021-10-02|website=IPWatchdog.com {{!}} Patents & Patent Law|language=en-US}}</ref> Likewise, the [[Biotechnology Innovation Organization]] praised the decision as being "instrumental in spurring the creation of a dynamic and flourishing biotech industry."<ref name="IPW" /> [[Nature (journal)|''Nature'']] similarly noted that, at least according to industry participants, “without"without ''Diamond v. Chakrabarty'', commercial biotechnology based on recombinant DNA technologies would not exist today.”"<ref>{{Cite journal|last1=Davey|first1=Neil|last2=Rader|first2=Randall Ray|last3=Chakravarti|first3=Debabrata|date=January 2021|title=Ananda Mohan 'Al' Chakrabarty 1938–2020|url=https://www.nature.com/articles/s41587-020-00785-4|journal=Nature Biotechnology|language=en|volume=39|issue=1|pages=18–19|doi=10.1038/s41587-020-00785-4|s2cid=229300870|issn=1546-1696|doi-access=free}}</ref>

George Mason University's Center for Intellectual Property and Innovation Policy has pointed out that, in the wake of ''Diamond v. Chakrabarty,'' the courts have continued to affirm the right of biotech industry developers to continue to claim ownership of altered biological life, while clarifying some limits in ''Mayo v. Prometheus'' and ''AMP v. Myriad.'' The Center has expressed concern over what may be interpreted as judicial activism, with this ambitious legal thrust in advance of Congressional ability to thoughtfully consider appropriate legislation.<ref>{{cite web | url=https://cip2.gmu.edu/2021/01/29/forty-years-since-diamond-v-chakrabarty-legal-underpinnings-and-its-impact-on-the-biotechnology-industry-and-society/ | title=Forty Years Since Diamond v. Chakrabarty: Legal Underpinnings and its Impact on the Biotechnology Industry and Society | date=29 January 2021 }}</ref>

While cases subsequent to ''Chakrabarty'' have provided some safeguards, such as forbidding the patenting of "limited DNA sequences," concerns have arisen that these safeguards do not go far enough, and that "biopiracy" of the human genome could take place, especially in an era of global health crisis demanding a rapid pharmaceutical response. A legal collaboration at the University of Pittsburgh suggests that it "is a stretch" to label such presumptiouspresumptuous genomic editing as outright slavery. <ref>{{cite web | url=https://www.jurist.org/commentary/2020/05/kaustubh-srivastava-human-gene-patenting-covid19/</ref> However,| title=Testing Human Rights Through Human Gene Patenting in viewCOVID-19 of| thedate=May fact16, that2020 }}</ref> However, as such editing in its most contemporary form may include the insertion of what has been termed by the industry as an entire "operating platform," concerns may continue.<ref>{{cite web | url=https://www.modernatx.com/power-of-mrna/modernas-mrna-platform | title=Moderna's mRNA Platform }}</ref>

* [[List of United States Supreme Court cases, volume 447]]

* [[Genetic engineering in the United States]]

<ref name=patentUS4259444>[httphttps://wwwpatents.google.com/patentspatent/US4259444 US Patent 4,259,444]</ref>

* {{Citation |last=Lumelsky |first=Anna |year=2005 |title=''Diamond v. Chakrabarty'': Gauging Congress's Response to Dynamic Statutory Interpretation by the Supreme Court |journal=University of San Francisco Law Review |volume=39 |issue=3 |pages=641 }}.

* {{Citation |last=Palombi |first=Luigi |year=2004 |url=https://works.bepress.com/luigi_palombi/4/ |title=The Patenting of Biological Materials in the Context of TRIPS |work=PhD thesis |publisher=University of New South Wales |location=Sydney, Australia |access-date=May 7, 2017 |archive-date=April 24, 2015 |archive-url=https://web.archive.org/web/20150424135629/http://works.bepress.com/luigi_palombi/4/ |url-status=dead }}.

* {{caselaw source