Five-minute digest
Diamond v. Chakrabarty
Summary
In 1972 Ananda Mohan Chakrabarty, a microbiologist working for the General Electric Company, applied for a patent on a bacterium of the genus Pseudomonas into which he had introduced plasmids, hereditary units outside the chromosome, that allowed it to break down several components of crude oil. No natural bacterium had this combined capacity. The patent examiner allowed his claims to the process of making the bacteria and to an inoculum of straw carrying them, but rejected the claims to the bacteria themselves, reasoning that living things are not patentable. The Patent Office Board of Appeals agreed, relying on the history of the 1930 Plant Patent Act. The Court of Customs and Patent Appeals reversed, holding that being alive was legally insignificant. The Commissioner of Patents, Sidney Diamond, sought review. The question was whether a live, human-made micro-organism is a manufacture or composition of matter under Section 101 of the Patent Act. The government argued that Congress's special statutes for plants in 1930 and 1970 showed that it did not understand the general patent law to cover living things, that the 1970 act expressly excluded bacteria, and that so novel and consequential a question should be left to Congress. Chakrabarty answered that the statute's words were broad, that the line the law draws is between products of nature and human inventions, and that his organism was plainly an invention. On 16 June 1980 the Court affirmed, five to four. Chief Justice Burger read the statutory terms in their ordinary meaning, recalled Jefferson's 1793 act, and noted that the committee reports on the 1952 act spoke of anything under the sun that is made by man. Laws of nature, physical phenomena and abstract ideas remain unpatentable, but Chakrabarty had produced a new bacterium with markedly different characteristics from any found in nature. The plant acts, Burger reasoned, reflected a distinction between products of nature and human-made inventions, not between living and inanimate things. As for the warnings of hazards from genetic research, the Court said it had no competence to weigh them; that was a matter of high policy for Congress. Justice Brennan, joined by Justices White, Marshall and Powell, dissented. He argued that the plant acts would have been unnecessary if living organisms were already patentable, that Congress had deliberately excluded bacteria in 1970, and that when a composition uniquely implicates matters of public concern, it is for Congress, not the Court, to extend the patent monopoly. The library text contains both opinions; the footnotes of the official report are not included in the body, though several notes on the science and legislative history are appended at the end. The patent issued in 1981. The decision helped open the way for the biotechnology industry, and the Patent Office later extended its reasoning to multicellular organisms. In 2013 the Court held in Association for Molecular Pathology v. Myriad Genetics that naturally occurring DNA segments are not patentable, drawing on the line Chakrabarty drew.
Top Lessons
Nature's handiwork and human invention
The Court drew the decisive line not between living and nonliving things but between what nature produces and what human ingenuity makes. Chakrabarty's bacterium did not exist in nature, so it counted as an invention, while a newly discovered plant or mineral would not.
Reading a statute's words
The majority read the words manufacture and composition of matter broadly, as Jefferson's 1793 law intended, and refused to limit them to inventions the legislators could foresee. The dissent read the later plant statutes as showing what Congress actually understood.
Who weighs the risks of new science?
The government and its supporters warned that genetic research might carry serious dangers. The Court answered that patent law would not stop research either way and that it had no competence to weigh such hazards; Brennan agreed that Congress should decide but drew the opposite conclusion about what the Court should do meanwhile.
Verified Quotes
Frequently cited
“Congress intended statutory subject matter to "include anything under the sun that is made by man."”
Frequently cited
“His discovery is not nature's handiwork, but his own; accordingly it is patentable subject matter under § 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.”
“What is more important is that we are without competence to entertain these arguments—either to brush them aside as fantasies generated by fear of the unknown, or to act on them.”
“The patent laws attempt to reconcile this Nation's deep seated antipathy to monopolies with the need to encourage progress.”
“It is the role of Congress, not this Court, to broaden or narrow the reach of the patent laws. This is especially true where, as here, the composition sought to be patented uniquely implicates matters of public concern.”
Medical Lens
Though the organism at issue was meant for cleaning oil spills, Chakrabarty became the legal foundation for patents on engineered cells, organisms and biological materials used in medicine and pharmaceutical research, and its refusal to weigh the hazards of genetic engineering left questions of bioethics to legislatures and agencies such as the NIH, whose 1976 guidelines the Court cites.
- Opinion of the Court, Part IV-B, paragraph beginning To buttress his argument, the petitioner
Summarizes warnings by scientists, including Nobel laureates, that genetic research might threaten human health or diversity, and the Court's view that patent law would not determine whether such research continued.
- Note appended to the opinion, paragraph beginning We are not to be understood as suggesting that the political branches have been laggard
Points to the National Institutes of Health guidelines of 1976 as an example of the political branches already regulating recombinant DNA research.
- Note appended to the opinion, paragraph beginning In 1873, the Patent Office granted Louis Pasteur a patent
Records that Pasteur received a patent on purified yeast in 1873 and that the Patent Office issued patents claiming micro-organisms in the late 1960s.