Patents Case Comment

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CASE COMMENTON

PATENT - DIAMOND V CHAKRABARTY [US]

CERTIFICATE COURSE IN

PATENTS ANDINTELLECTUAL PROPERTYLAWS

BATCH - OCTOBER 2005

COURSE CO-ORDINATOR -NILIMA BHADBHADE


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PRESENTED BY

KAMALJEET KAUR REALCase details

DIAMOND, COMMISSIONER OF PATENTS AND

TRADEMARKS v. CHAKRABARTYCourt Date: 06/16/1980

Court Citation: 100 S. Ct. 2204; 65L, Ed. 2d 144

Judges: Justice Burger, justice Stewart, JusticeBlackmun, Justice Rehnqusit, Justice Stevens, JusticeBrennan, Justice White, Justice Marshall, JusticePowell


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Facts in brief including progress of

proceedings in courts and provisions underwhich the proceedings have been filed.

The case of Diamond v Chakrabarty relatesto the patent rights to a genetically

engineered microorganism i.e. a bacteria tocreate an oil-dissolving microbe for breakingdown crude oil. Mr. Chakrabarty who isthe respondent in this case, applied for a

patent upon his artificially made bacterium,under Title 35, U.S. Code 101. Title 35authorizes the patent of any newly mademanufacture of composition of matter.


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Facts in brief including progress of

proceedings in courts and provisions underwhich the proceedings have been filed.

The original patent examiner denied Mr.Chakrabartyd s patent claim, and the Patent

Office Board of Appeals agreed with theexaminer. The Court of Customs andPatent Appeals overturned the ruling of theBoard of Appeals holding that whoeverinvents or discovers any new and useful

process, machine, manufacture, orcomposition of matter, or any new anduseful improvement thereof, was entitled toobtain a patent for it.


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Facts in brief including progress ofproceedings in courts

The Court further explained that whilenatural laws, physical phenomena, abstractideas, or newly discovered minerals were not

patentable, a live artificially-engineeredmicroorganism was patentable. According tothe Court the creation of a bacterium thatwas not found anywhere in nature,constituted a patentable "manufacture" or

"composition of matter" under Section 101.Moreover, the bacterium's man-made abilityto break down crude oil made it veryuseful.


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Case of each party

Chakrabarty's patent claims were of three types:

first, process claims for the method ofproducing the bacteria; second, claims for aninoculum comprised of a carrier materialfloating on water, such as straw, and the new

bacteria; and third, claims to the bacteriathemselves. The patent examiner allowed theclaims falling into the first two categories, butrejected claims for the bacteria. His decision

rested on two grounds: (1) that micro-organismsare "products of nature," and (2) that as livingthings they are not patentable subject matterunder 35 U. S. C. S.101.


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Case of each party

Chakrabarty appealed the rejection of these

claims to the Patent Office Board of Appeals,and the Board affirmed the examiner on thesecond ground. The Court relied on thelegislative history of the 1930 Plant Patent Act,

in which Congress extended patent protection tocertain asexually reproduced plants, the Boardconcluded that S. 101 was not intended to coverliving things such as the laboratory created

micro-organisms.


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Case of each party

The Board concluded that the new bacteria

were not "products of nature," becausePseudomonas bacteria containing two or moredifferent energy-generating plasmids were notnaturally occurring.


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Case of each party

Taking the help of many decided cases, the

Court decided that the respondent's micro-organism plainly qualified as patentable subjectmatter, since his claim was not to a hithertounknown natural phenomenon, but to a

nonnaturally occurring manufacture orcomposition of matter i.e. a product of humaningenuity "having a distinctive name, characterand use."

The plaintiff however argued that micro-organisms could not qualify as patentablesubject matter until Congress expresslyauthorized such protection.


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Issues involved and decided bythe court

The issue involved and decided by theCourt in this case is whether the

bacterium invented by Mr. Chakrabartyis a patentable manufacture orcomposition of matter, as understoodwithin Title 35, U.S.C. 101. The Court

answered this question in affirmative.


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Arguments for each party Argument by the Respondent

Mr. Chakrabartyd s application asserted 36claims relating to his invention of "a bacteriumfrom the genus Pseudomonas containing thereinat least two stable energy-generating plasmids,each of said plasmids providing a separate

hydrocarbon degradative pathway." This human-made, genetically engineered bacterium wascapable of breaking down multiple componentsof crude oil. Because of this property, whichwas possessed by no naturally occurring bacteria,

Chakrabarty argued that his invention hadsignificant value for the treatment of oil spills.


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Arguments for each party Argument by the Respondent

Chakrabarty's patent claims were of threetypes: first, process claims for the method of

producing the bacteria; second, claims for aninoculum comprised of a carrier material floatingon water, such as straw, and the new bacteria;

and third, claims to the bacteria themselves. Thepatent examiner allowed the claims falling intothe first two categories, but rejected claims forthe bacteria. His decision rested on two grounds:(1) that micro-organisms were "products of

nature," and (2) that as living things they werenot patentable subject matter under 35 U.S.C.101.


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Arguments for each party

Argument by the RespondentChakrabarty appealed the rejection of these

claims to the Patent Office Board of Appeals,and the Board affirmed the examiner on thesecond ground. Relying on the legislative history

of the 1930 Plant Patent Act, in which Congressextended patent protection to certain asexuallyreproduced plants, the Board concluded that 101was not intended to cover living things such as

these laboratory created micro-organisms.


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Argument by the Petitioner

The petitioner's first argument was based on theenactment of the 1930 Plant Patent Act, whichafforded patent protection to certain asexuallyreproduced plants, and the 1970 Plant Variety

Protection Act, which authorized protection forcertain sexually reproduced plants but excludedbacteria from its protection. In the petitioner'sview, the passage of these Acts proved thecongressional understanding that the terms"manufacture" or "composition of matter" did notinclude living things; if they did, the petitionerargued, neither Act would have been necessary.


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Argument by the PetitionerThe Court rejected this argument. They statedthat prior to 1930, two factors were thought toremove plants from patent protection. The firstwas the belief that plants, even those artificially

bred, were products of nature for purposes ofthe patent law. This position appeared to havederived from the decision of the Patent Officein Ex parte Latimer, 1889 Dec. Com. Pat. 123,

in which a patent claim for fiber found in theneedle of the Pinus australis was rejected.


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The Commissioner reasoned that a contraryresult would permit "patents to be obtained uponthe trees of the forest and the plants of theearth, which of course would be unreasonable

and impossible." it seemed that the Latimer casecame to set forth the general stand taken inthose matters" that plants were natural productsnot subject to patent protection. The secondobstacle to patent protection for plants was thefact that plants were thought not amenable tothe "written description" requirement of the

patent law. Because new plants might differfrom old only in color or perfume,differentiation by written description was oftenimpossible.


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Even the passage of the 1970 Plant VarietyProtection Act did not support the Government's

position. As the Government acknowledged,sexually reproduced plants were not included

under the 1930 Act because new varieties couldnot be reproduced true-to-type through seedlings.However, it was generally recognized that true-to-type reproduction was possible and that plant

patent protection was therefore appropriate. The1970 Act extended that protection. There wasnothing in its language or history whichsuggested that it was enacted because S. 101 didnot include living things.


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The legislative process, the petitioner argued, wasbest equipped to weigh the competing economic,social, and scientific considerations involved, andto determine whether living organisms produced

by genetic engineering should receive patent protection. In support of this position, the petitioner relied on the Courtd s decision inParker v. Flook, 437 U.S. 584 (1978), and thestatement that the judiciary "must proceedcautiously when asked to extend patent rightsinto areas wholly unforeseen by Congress."


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Argument by the PetitionerTo strengthen his argument, the petitioner, withthe support of amicus, pointed to grave risksthat might get generated by research endeavorssuch as of the respondent's. Scientists, among

them Nobel laureates, were quoted suggestingthat genetic research might pose a serious threatto the human race or, at the very least, that thedangers were far too substantial to permit such

research to proceed apace at that time.


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The Court was told that genetic research andrelated technological developments might spread

pollution and disease, that it might result in aloss of genetic diversity, and that its practice

might tend to depreciate the value of humanlife. These arguments were forcefully, even passionately, presented reflecting that humaningenuity was unable to control fully the forcesit created. It was argued that the Court shouldweigh these potential hazards in consideringwhether respondent's invention was patentablesubject matter under S. 101.


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But the Court disagreed stating that the grant ordenial of patents on micro-organisms was notlikely to put an end to genetic research or to itsattendant risks. The large amount of research

that has already occurred when no researcherhad sure knowledge that patent protection wouldbe available suggested that legislative or judicialdeterrence as to patentability would not deter

the scientific mind from probing into theunknown any more than Canute could commandthe tides.


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Whether respondent's claims were patentable

might determine whether research efforts

were accelerated by the hope of reward orslowed by want of incentives, but that wasall, it meant.


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Judgment

Justice Burger gave the following opinion on behalfof the Court

1. Patent laws, receiving their authority from ArticleI, Section 8, Clause 8 of the Constitution, had,throughout history, been broadly interpreted. These

laws included the Patent Act of 1793, its 1952revision, and the Plant Patent Act. The latter Act permitted the patenting of a plant breederd sprocedural efforts.

2.The bacterium in question was an artificiallymade composition of matter. This was because thebacterium had capabilities not found in naturallyoccurring bacterium.


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Judgment 3. Chakrabarty s invention was not a law of

nature or naturally occurring phenomena, so it wasnot without the realm of patentable material.

4. The Court quoted a House and Senate Report,concerning the Plant Patent Act:

e There is a clear and logical distinction betweenthe discovery of a new variety of plant and ofcertain inanimate things, such, for example, as a newand useful natural mineral. The mineral is createdwholly by nature unassisted by man. On the other

hand, a plant discovery resulting from cultivation isunique, isolated, and is not repeated by nature, norcan it be reproduced by nature unaided by man.f


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Judgment

5. It was the responsibility of Congress tospecifically set out the limits of

patentable material.


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Judgment

Whereas Justice William J. Brennan, alongwithJustice Byron White, Justice Thurgood Marshall,and Justice Lewis Franklin Powell expressedtheir dissent by stating that that the Congress,by failing to legislate in the matter, did notintended the development of a monopoly over aliving organism. The argument of the respondentChakarbarthy that Congress had not anticipatedgenetic engineering when the patent law wasenacted was not acceptable to the dissentingjudges and they opined that the Court must be

careful to extend patent protection no furtherthan Congress had provided.


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Judgment

The dissenting judges stated that they didnot confront a complete legislative vacuumand making specific comments on the 1930Plant Patent Act and 1970 Plant Variety

Protection Act, which explicitly allowedpatents for plants in certain cases, statedthat, the Acts evidenced Congress'understanding, at least since 1930, that S.

101 did not include living organisms.


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Judgment

If newly developed living organisms not naturallyoccurring had been patentable under S. 101, theplants included in the scope of the 1930 and1970 Acts could have been patented withoutnew legislation and therefore because the

Congress thought it had to legislate in order tomake agricultural "human-made inventions"

patentable and because the legislation Congressenacted was limited, it followed that Congressnever meant to make items outside the scope ofthe legislation patentable.


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Judgment

The judges also referred to the 1970 Actand expressed their opinion that whereCongress specifically excluded bacteriafrom the coverage of the 1970 Act, it

meant that the fact was that Congress,assumed that animate objects as to whichit had not specifically legislated could notbe patented and thus excluded bacteria

from the set of patentable organisms.


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My comments about thejudgment

The Courtd s ruling in this case is very limitean narrow. The majority ju ges are primarilyconcerne with the artificial qualities of thesubject matter i.e. the genetically engineere

bacteria. Although the Court eci e the casein favor of the respon ent, they ma e a pointof making a istinction between naturalphenomena (inclu ing natural life forms) annon natural, unique organisms. The fact that

the case was eci e by a bare majority of theCourt highlights the ebatable nature of thesubject matter involve .


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This case helped to open the gates for patentpetitions in respect of genetically engineeredbiological material. Although the Court statedthat the decision was based on the text of the

federal patent subject matter statute, in realityneither statutory text nor legal precedentsupported the issue. In fact, given the groundbreaking nature of the patent application atissue, a decision againstpatentability in the case

would have been both easier to justify andsignificantly less controversial than the Court sactual decision.


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Far from simply applying clear law tofacts, the Court in this case adopted anaggressive method of interpretation in

order to update a statute in conformitywith changing technology. Althoughseveral Congressional debates about thiscasehave occurred in the nearly quarter-

century since the decision, this case wasnever overridden by Congress.


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It has been suggested by many authorities onthis matter that in science and technology-relatedcases in which delay could significantly slowdown the advancement of the field, the Supreme

Court s hould interpret federal statutesdynamically in response to a changing socialcontext, but should also attempt to conform itsinterpretations to legislativepreferences in order

to avoid a legislative override.

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