Diamond vs. Chakrabarty: Plasmids Providing A Separate Hydrocarbon Degradative Pathway) Themselves

DIAMOND VS.
CHAKRABARTY
(447 U.S. 303 1980)
FACTS OF THE CASE:

A 36 patent application was filed by General Electric company microbiologist Chakrabarty to his invention genetically
engineered bacterium is capable of breaking down multiple components of crude oil. Because of this property, which is
possessed by no naturally occurring bacteria, Chakrabarty's invention is believed to have significant value for the treatment
of oil spills.
3 types of application covered: (1) process claims for the method of producing the bacteria; (2) claims for an inoculum
comprised of a carrier material floating on water, such as straw, and the new bacteria; (3) claims to the bacteria
(bacterium from the genus Pseudomons containing therein at least two stable energy-generating plasmids, each of said
plasmids providing a separate hydrocarbon degradative pathway) themselves.
The patent examiner rejected the 3rd one on the ground that the (1) that micro-organisms are "products of nature," and (2)
that, as living things, they are not patentable subject matter under 35 U.S.C. § 101.
On appeal, the Patent Office Board Appeals sustained the second argument that LIVING THINGS are not patentable subject
matter under the legislative history of the 1930 Plant Patent Act about the extension of patents to asexually reproduction
of plants and hence, the 35 U.S.C S101 was not intended to cover living things such as these laboratory-created micro-
organisms.
When appealing to the Court of Customs Appeals, the Customs reversed the ruling of the Patent Office and reversed also
the ruling of the Court of Customs in its prior case handled which held that " the fact that micro-organisms . . . are alive . . .
[is] without legal significance" for purposes of the patent law.
Acting Commissioner of Patents and Trademarks Diamond again sought certiorari
ISSUE:
Whether the claim of bacteria is patentable?
HELD:
VERBA LEGIS NON EST RECEDENDUM
In particular, we find nothing in the exclusion of bacteria from plant variety protection to support the petitioner's
position. See n 7, supra. The legislative history gives no reason for this exclusion. As the Court of Customs and Patent
Appeals suggested, it may simply reflect congressional agreement with the result reached by that court in deciding In re
Arzberger, which held that bacteria were not plants for the purposes of the 1930 Act. Or it may reflect the fact that, prior to
1970, the Patent Office had issued patents for bacteria under § 101. In any event, absent some clear indication that
Congress "focused on [the] issues . . . directly related to the one presently before the Court,", there is no basis for reading
into its actions an intent to modify the plain meaning of the words found in § 101.
Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products
of nature, whether living or not, and human-made inventions. Here, the respondent's micro-organism is the result of
human ingenuity and research.
A live, human-made micro-organism is a patentable subject matter under § 101. Respondent's micro-organism constitutes a
"manufacture" or "composition of matter" within that statute.
(a) In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any,"
Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a
broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's
claim is not to a hitherto unknown natural phenomenon, but to nonnaturally occurring manufacture or composition of
matter -- a product of human ingenuity "having a distinctive name, character [and] use." Hartranft v. Wiegmann, 121 U. S.
609, 121 U. S. 615. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, distinguished.
(b) The passage of the 1930 Plant Patent Act, which afforded patent protection to certain asexually reproduced plants, and
the 1970 Plant Variety Protection Act, which authorized protection for certain sexually reproduced plants but excluded
bacteria from its protection, does not evidence congressional understanding that the terms "manufacture" or "composition
of matter" in § 101 do not include living things.
(c) Nor does the fact that genetic technology was unforeseen when Congress enacted § 101 require the conclusion that
micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. The
unambiguous language of § 101 fairly embraces the respondent's invention. Arguments against patentability under § 101,
based on potential hazards that may be generated by genetic research, should be addressed to Congress and the Executive,
not to the Judiciary.
In Chakrabarty, scientists added four plasmids to a bacterium, which enabled it to break down various components of
crude oil. The Court held that the modified bacterium was patentable. It explained that the patent claim was “not to a
hitherto unknown a natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter—a
product of human ingenuity ‘having a distinctive name, character [and] use.’”
DECISION:
Accordingly, the judgment of the Court of Customs and Patent Appeals is Affirmed.
Plasmids are hereditary units physically separate from the chromosomes of the cell. In prior research, Chakrabarty and an
associate discovered that plasmids control the oil degradation abilities of certain bacteria. In particular, the two researchers
discovered plasmids capable of degrading camphor and octane, two components of crude oil. In the work represented by
the patent application at issue here, Chakrabarty discovered a process by which four different plasmids, capable of
degrading four different oil components, could be transferred to and maintained stably in a single Pseudomonas bacterium,
which itself has no capacity for degrading oil.

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DIAMOND VS.

FACTS OF THE CASE:

Acting Commissioner of Patents and Trademarks Diamond again sought certiorari

VERBA LEGIS NON EST RECEDENDUM

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