Diamond, Commissioner of Patents and Trademarks v. Chakrabarty
447 U.S. 303 (1980)

  • Chakrabarty applied for a patent for a genetically-engineered bacteria that could eat all the different components of oil. There were three parts to the patent:
    • Method for producing the bacteria,
    • Composition of a slurry of bacteria and carrier liquids, and
    • The bacteria themselves.
  • The USPTO allowed the first two claims, but denied the third. Chakrabarty appealed.
    • The USPTO looked to 35 U.S.C. §101 and found that living things are not patentable subject matter.
      • §101 requires that an invention be manufactured or a composition of matter (or a machine, or a process). Living things aren’t manufactured, they are ‘grown’, and they aren’t composition of matter, they are living organisms. So they didn’t fit under any of the definitions of things that are patentable.
      • The USPTO had a rule saying that things like new strains of plants (aka ‘products of nature’) were not patentable.
    • Chakrabarty argued that the genetic engineering he did on the bacteria was a form of manufacture, therefore it met the standard.
  • The Court of Customs and Patent Appeals reversed and awarded the patent. The USPTO appealed.
  • The Supreme Court affirmed.
    • The US Supreme Court noted that laws of nature, physical phenomena and abstract ideas cannot be patented.
      • That includes plants and minerals you find in the environment, as well as mathematical formulas.
    • However, the Court found that genetically-engineered organisms fall within the definition of manufactured.
      • “Chakrabarty’s claim is not to a hitherto unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matterÉHis discovery is not nature’s handiwork, but his own, accordingly it is patentable subject matter under 35 U.S.C. §101.”
      • Basically, ‘products of nature’ are not patentable because the discoverer isn’t really an ‘inventor’ they didn’t do anything themselves, they just found something that preexisted. However, that argument doesn’t apply to Chakrabarty because he did work to create the new bacteria.
    • The Court also found that bacteria could technically meet the definition of a composition of matter.
    • The Court noted that Congress had in the past excluded certain inventions from patent (like nuclear bombs), so if Congress didn’t want people patenting genetically-modified organisms they were free to change the law.
      • The Court felt that the patent system should be read broadly to encompass new fields that Congress didn’t foresee when they wrote §101.
    • The Plant Protection Act and the Plant Variety Protection Act (see 25 U.S.C. §§161-164) were passed by Congress specifically to create a patent regime that would cover living things, implying that Congress felt that the general patent system wouldn’t cover living things. If bacteria (and presumably plants) are covered by §101, then doesn’t §§161-164 become superfluous? The Court considered this argument, but rejected it.