ANALYSIS BY THE LAW OFFICE OF THOMAS L. ADAMS
In Private Practice for 25 Years

LANDMARK DECISION - PATENTING A LIVING ORGANISM

Diamond v. Chakrabarty, 447 US 303 (1980)

Respondent Chakrabarty sought a patent after genetically engineering a bacterium capable of breaking down multiple components of crude oil under Title 35 of USC Section 101.  The ability to break down crude oil is a property not possessed by any naturally occurring bacteria.  The patent examiner rejected the application.  The Patent Office Board of Appeals affirmed, finding that living beings are not patentable under Section 101. 

35 US 101 provides “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new useful improvements thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

The Constitution grants broad powers to Congress to promote the progress of science and useful arts.  The Court began with an analysis of statutory construction.  The Court opined that Congress chose expansive terms, modified by the word “any”, thus giving the patent laws wide scope. 

The question before the Supreme Court was whether Chakrabarty’s micro-organism constitutes a “manufacture” or “composition of matter” within the meaning of 35 USC 101. 

Although physical phenomena, abstract ideas, or newly discovered minerals are not patentable, a live, artificially engineered microorganism is eligible for patent protection.  The Court held that Congress is free to amend Section 101 to exclude organisms from patent protection, or to craft a statute specifically designed for such living beings.  However, Congress has not taken such action, thus the Court must construe the language of Section 101 as it is.  The court found that the language embraced Chakrabarty’s invention, a nonnaturally occurring manufacture or composition of matter, a product of human ingenuity. 

Copyright Thomas L. Adams 2014

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