DIAMOND VS. CHAKRABARTY

Author: Dharni Dhruv

NAME OF THE CASE: Diamond vs. Chakrabarty

DECIDED ON: June 16, 1980

CITATION NO: 447 U.S. 303

JUDGES:

  1. Assenting Judges: Burger (C.J), Stewart, Blackmun, Rehnquist; and Stevens.
  2. Dissenting Judges: Brennan, White, Marshall; and Powell.

ABSTRACT

It was invented at the University of Illinois College of Medicine by immunologist Ananda Chakrabarty. Chakrabarty claimed in his patent application a Pseudomonas bacterium having two stable energy-generating plasmids. This genetically modified microbe is capable of degrading crude oil components. This characteristic is unique to Chakrabarty’s creation and may prove useful in dealing with oil spills. No earlier US patent had been issued on a living organism. Since 1873, when Louis Pasteur secured US Patent No. 141,072, the USPTO has granted patents on single-cell organisms. Although it is questionable whether the Supreme Court’s Chakrabarty decision hampered biotechnology research and development, it undoubtedly provided firms in this new industry with an incentive to invest in novel medical treatments, drug regimens, and diagnostic tools. Additionally, it prompted the sector to patent ever-greater novelties. As science advances beyond genetic modification of bacteria to transgenic animals and human gene sequences, certain religious and public interest groups oppose animal life form patenting. These are ethical concerns concerning scientific advancement, not patent law concerns.

KEY WORDS: Microorganisms, Bacteria, USPTO, Biotechnology, Patent

PROVISIONS INVOLVED: According to Section 101 of Title 35 of the United States Code, “Whoever invents or discovers a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent for such invention or discovery, subject to the conditions and requirements of this title.”

BRIEF FACT:

In 1972, Ananda Chakrabarty, an immunologist at the University of Illinois College of Medicine, submitted a patent application to General Electric. The application asserted 36 claims about Chakrabarty’s invention of “a Pseudomonas bacterium containing at least two stable energy-generating plasmids, each of which offers a different hydrocarbon degradative pathway.” Humans generated this genetically engineered microbe, which is capable of digesting several components of crude oil. Because no naturally occurring bacteria possesses this property, Chakrabarty’s discovery is predicted to have a significant impact on the treatment of oil spills.

Chakrabarty’s patent claims were of three types:

  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; and
  3. Claims to the bacteria themselves.

The patent examiner allowed the claims falling into the first two categories, but rejected claims for the bacteria. His decision rested on two grounds:

  • Those micro-organisms are “products of nature,” and
    • That as living things they are not patentable subject matter under 35 U. S. C. §101.

Chakrabarty appealed to the Patent Office Board of Appeals. Chakrabarty argued that his genetic modification of the bacterium was patented as a production technique. It did so on the second ground. Based on the 1930 Plant Patent Act, which protected asexually reproduced plants, the Board concluded that §101 was not intended to cover living things such as these laboratories created microorganisms. The US Court of Customs and Patent Appeals overturned Chakrabarty’s conviction. It stated: “It is irrelevant that germs are living because they are a created or composed matter with a separate identity, character, and function. Microbes are also not patentable due to the lack of genetic technology when Section 101 was adopted.” Commissioner Sidney A. Diamond then requested a writ of certiorari. Chakrabarty was heard in March 1980. Deputy Solicitor General Wallace argued for the USPTO. Schuyler, Birch, McKie, and Beckett represented Chakrabarty.

ISSUES:

Primary Issue:

Whether genetically engineered microorganism constitutes “manufacture” or “composition of matter” within the meaning of Section 101 of Title 35 United States Code?

Secondary Issues:

  1. Whether micro-organism has been excluded as living thing as per Plant Patent Act, 1930 and Plant Varieties Protection Act, 1970?
  2. Whether micro-organism could qualify as a patentable subject-matter without express authorization by the Congress?

ARGUMENTS ADVANCED:

Primary Issue:

Whether genetically engineered microorganism constitutes “manufacture” or “composition of matter” within the meaning of Section 101 of Title 35 United States Code?

Court’s View:

The Court began by reviewing Southeastern Community College v. Davis, which said that the language of the Act should be examined first. Without a definition for “manufacturing” and “material composition,” the court reverted to Perrin v. United States, which said that “unless otherwise specified, words shall be taken in their common, contemporaneous sense.” According to the US v. Dubilier Condenser Corp. decision, “courts should not incorporate limitations and conditions into patent regulations that have not been expressly specified by the legislature.”It defined 101 as “the manual or automated transformation of basic materials into useful things.” It encompasses “any composite goods made up of two or more components, whether chemical or mechanical in nature”

(Shell Dev. Co. v. Watson). Congress made it quite obvious that it sought wide patent requirements by utilising broad terms such as “manufacturing” and “composition of substance.”The Supreme Court concluded that “everything made by man” is patentable after analysing the broad statutory scope. The Court determined that the patentee created a novel microbe having previously unseen characteristics. Under 101, a non-natural discovery is patentable. This standard expressly grants respondent’s microorganism patentability. His contention is that a human innovation possesses a “unique name, character, and use.”

Secondary Issues:

  1. First, the petitioner references the 1930 Plant Patent Act, which protected certain sexually reproduced plants, and the 1970 Plant Variety Protection Act, which covered sexually reproduced plants but not microorganisms. The petitioner asserts that Congress recognised, via the passing of these Acts, that the terms “manufacture” and “composition of matter” do not encompass living organisms.

Court’s View:

They believe that there is a clear and logical distinction between the discovery of new plant species and the discovery of novel and useful natural minerals. Natural processes produce the mineral. Natural selection cannot replicate the discovery of a cultivated plant. Congress recognised the distinction between natural and man-made commodities, as well as between living and non-living things. The bacterium created by the responder is a human creation. As a result, the Plant Patent Act is of little utility to the state. The 1970 Plant Variety Protection Act further refutes the Government’s claim. The Government admits that sexually reproduced plants were excluded from the 1930 Act because seedlings could not produce new types true to type. However, true-to-type replication was plausible, and so plant patent protection was justified. The 1970 Act enhanced that protection. That it was implemented in response to 101’s exclusion of living creatures is unclear. We find no support for the petitioner’s allegation that bacteria are not protected as plant varieties. Additionally, the legislative history provides no explanation.

  • The petitioner’s second point is that microorganisms are ineligible for patent protection unless and until Congress expressly approves such protection. It is contended that Congress should resolve the patentability of inventions such as respondent’s.

Court’s View:

While Congress must define patentability, the Court concluded that the judicial branch, as established in Marbury v. Madison, must also define the law. Congress fulfilled its constitutional obligation when it defined patentable subject matter in 101; we fulfil our obligation by interpreting Congress’s words. When a statute is ambiguous, we must read it holistically, guided by the legislative history and purpose. There is no ambiguity here. The subject-matter clauses of the patent law are intended broadly to promote “the Advancement of Science and useful Arts,” together with any associated social and economic benefits. When Congress requires broad language, it is not always obvious. The definition in 101 adequately captures respondent’s ingenuity.

DECISION OF THE COURT:

Chakrabarty’s microorganism, according to Chief Justice Warren Burger’s majority judgement, was valuable “not as a result of nature’s artistry, but as a result of his own. His claim is for the synthetic synthesis or decomposition of materials “under a certain name, character, and application.” As a result of this decision, the Court of Customs and Patent Appeals upheld it.

The court supported the principle that “natural laws, physical truths, and abstract concepts cannot be copied.” A mineral or plant discovered in the wild is not patentable subject matter. Similarly, Einstein was not permitted to patent E=mc2 and Newton was not permitted to patent the gravitational equation. These findings constitute “manifestations of nature” that “all mankind may freely enjoy.”

DISTINCTION DRAWN BY THE COURT:

The dissimilarity between Chakrabarty’s and Funk Brother’s inventions helps to explain why the latter was denied patent protection. The patentee identified naturally occurring root-nodule bacteria that did not mutually inhibit one another. He applied this information to the development of a mixed culture capable of inoculating leguminous plant seeds. To be unpatentable, the patentee discovered “just a work of nature’s handiwork.” The cause is as follows:

Each root-nodule bacterium contained in the package is capable of infecting only one variety of leguminous plant. No species acquires a new function. The combination of the six species results in no new bacteria, no modifications to the six bacteria, and no increase in their worth. Each species has the identical impact. Microorganisms behave in a natural manner. Combining them has no effect on how they naturally function. They accomplish the same objectives as nature intended and do so independently of the patentee.

By contrast, the patentee has created a novel bacterium with properties that are notably different from those found in nature and that has the potential for great utility. His discovery is not the work of nature, but rather his own; as such, it is patentable subject matter under 101.

ANALYSIS OF THE CASE:

the Supreme Court’s decision in Diamond v. Chakrabarty, which was essential in supporting the development of a vibrant and thriving biotechnology industry. The Court reassuringly ruled that subject matter received from nature is patentable if it is transformed by man into something unique, valuable, and unobvious. This case has widened the scope of what constitutes patentable subject matter. All doubts concerning what can and cannot be patented have been erased as a result of the averments made and arguments advanced by the United States Supreme Court in this ruling. Additionally, the court’s divergence between this case and Funk Brothers’ case established the patentability subject matter. Thus, the court anticipated future improvements and assured inventors, investors, and researchers that they might continue progressing in the field by expanding the scope of the patent to a new level. The decision in this case had a considerable impact, notably on the biotechnology industry, and was, in my opinion, properly rendered, paving the road for future advancements.

IMPACT OF THE DECISION:

On April 7, 1988, the USPTO announced that “non-naturally occurring non-human multicellular living organisms, including animals, are now patentable subject matter under 35 U.S.C. 101.” Since the Supreme Court decision, the biotechnology industry in the United States has improved and saved lives through novel medicinal therapies, higher agricultural production, and renewable energy.

As stated by Chakrabarty’s counsel, Dale Hoscheit: “While the issue decided in Chakrabarty was narrow, it resulted in the elimination of patent restrictions for a broad range of biotechnological advancements. Patents for these improvements are simply limited by the claim writers’ expertise. While there are moral and ethical concerns inherent in the creation of living things, patents are not intended to address them. The Patent Office’s mission is to establish innovation and non-obviousness; moral and ethical considerations are best left to other bodies that are properly tasked with addressing those matters.”

CONCLUSION:

The Chakrabarty patent was not the first in the United States to deal with a live organism. Since 1873, when Louis Pasteur secured US Patent No. 141,072 for a pure yeast cell, single-cell organisms have been granted several patents. It is impossible to determine whether the young biotechnology industry would have invested in new medical treatments and medication therapies, as well as new and improved technologies, had the Supreme Court not decided against the inventor in Chakrabarty. Additionally, the corporation was pushed to pursue patent protection for ever-expanding technological advancements. Concerns regarding patenting animal life forms ranged from bacteria to transgenic animals to human DNA sequences. Several religious and public interest groups expressed reservations about patenting animal life forms. Nonetheless, these are ethical concerns concerning scientific advancement, not patent law.

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