CASE COMMENT

ON
PATENT - DIAMOND V CHAKRABARTY [US]

CERTIFICATE COURSE IN
PATENTS AND
INTELLECTUAL
PROPERTY LAWS

BATCH - OCTOBER 2005

COURSE CO-ORDINATOR
- NILIMA BHADBHADE
 PRESENTED BY –
KAMALJEET KAUR REAL
Case details
DIAMOND, COMMISSIONER OF PATENTS
AND TRADEMARKS v. CHAKRABARTY
Court Date: 06/16/1980
Court Citation: 100 S. Ct. 2204; 65L, Ed. 2d 144
Judges: Justice Burger, justice Stewart, Justice
Blackmun, Justice Rehnqusit, Justice Stevens,
Justice Brennan, Justice White, Justice
Marshall, Justice Powell
 Facts in brief including progress of
proceedings in courts and provisions
under which the proceedings have been
filed.
The case of Diamond v Chakrabarty
relates to the patent rights to a genetically
engineered microorganism i.e. a bacteria to
create an oil-dissolving microbe for
breaking down crude oil.  Mr. Chakrabarty
who is the respondent in this case, applied
for a patent upon his artificially made
bacterium, under Title 35, U.S. Code 101. 
Title 35 authorizes the patent of any newly
made manufacture of composition of
matter. 
 Facts in brief including progress of
proceedings in courts and provisions
under which the proceedings have been
filed.
The original patent examiner denied Mr.
Chakrabarty’s patent claim, and the Patent
Office Board of Appeals agreed with the
examiner.  The Court of Customs and
Patent Appeals overturned the ruling of the
Board of Appeals holding that whoever
invents or discovers any new and useful
process, machine, manufacture, or
composition of matter, or any new and
useful improvement thereof, was entitled to
obtain a patent for it.
 Facts in brief including progress of
proceedings in courts
The Court further explained that while
natural laws, physical phenomena,
abstract ideas, or newly discovered
minerals were not patentable, a live
artificially-engineered microorganism
was patentable. According to the Court
the creation of a bacterium that was not
found anywhere in nature, constituted a
patentable "manufacture" or "composition
of matter" under Section 101. Moreover,
the bacterium's man-made ability to
break down crude oil made it very useful.
 Case of each party
Chakrabarty's patent claims were of three
types: first, process claims for the method
of producing the bacteria; second, claims for
an inoculum comprised of a carrier material
floating on water, such as straw, and the
new bacteria; and third, 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: (1) that micro-organisms are
"products of nature," and (2) that as living
things they are not patentable subject
matter under 35 U. S. C. S.101.
 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 the second ground. The Court
relied on the legislative history of the 1930
Plant Patent Act, in which Congress
extended patent protection to certain
asexually reproduced plants, the Board
concluded that S. 101 was not intended to
cover living things such as the laboratory
created micro-organisms.
 Case of each party
The Board concluded that the new bacteria
were not "products of nature," because
Pseudomonas bacteria containing two or
more different energy-generating plasmids
were not naturally occurring.
 Case of each party
Taking the help of many decided cases, the
Court decided that the respondent's micro-
organism plainly qualified as patentable
subject matter, since his claim was not to a
hitherto unknown natural phenomenon, but
to a nonnaturally occurring manufacture or
composition of matter i.e. a product of
human ingenuity "having a distinctive name,
character and use."
The plaintiff however argued that micro-
organisms could not qualify as patentable
subject matter until Congress expressly
authorized such protection.
 Issues involved and decided
by the court

The issue involved and decided by

the Court in this case is whether the
bacterium invented by Mr.
Chakrabarty is a patentable
manufacture or composition of
matter, as  understood within Title
35, U.S.C. 101. The Court answered
this question in affirmative.
Arguments for each party
– Argument by the Respondent
Mr. Chakrabarty’s application asserted 36
claims relating to his invention of "a
bacterium from the genus Pseudomonas
containing therein at least two stable
energy-generating plasmids, each of said
plasmids providing a separate hydrocarbon
degradative pathway." This human-made,
genetically engineered bacterium was
capable of breaking down multiple
components of crude oil. Because of this
property, which was possessed by no
naturally occurring bacteria, Chakrabarty
argued that his invention had significant
value for the treatment of oil spills.
Arguments for each party
– Argument by the Respondent
Chakrabarty's patent claims were of three
types: first, process claims for the method of
producing the bacteria; second, claims for an
inoculum comprised of a carrier material
floating on water, such as straw, and the
new bacteria; and third, 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: (1) that micro-organisms were
"products of nature," and (2) that as living
things they were not patentable subject
matter under 35 U.S.C. 101.
Arguments for each party
– Argument by the Respondent
Chakrabarty appealed the rejection of these
claims to the Patent Office Board of Appeals,
and the Board affirmed the examiner on the
second ground. Relying on the legislative
history of the 1930 Plant Patent Act, in
which Congress extended patent protection
to certain asexually reproduced plants, the
Board concluded that 101 was not intended
to cover living things such as these
laboratory created micro-organisms.
Arguments for each party
– Argument by the Petitioner
The petitioner's first argument was based on
the enactment of the 1930 Plant Patent Act,
which afforded patent protection to certain
asexually reproduced plants, and the 1970
Plant Variety Protection Act, which
authorized protection for certain sexually
reproduced plants but excluded bacteria from
its protection. In the petitioner's view, the
passage of these Acts proved the
congressional understanding that the terms
"manufacture" or "composition of matter" did
not include living things; if they did, the
petitioner argued, neither Act would have
been necessary.
Arguments for each party
– Argument by the Petitioner
The Court rejected this argument. They
stated that prior to 1930, two factors were
thought to remove plants from patent
protection. The first was the belief that
plants, even those artificially bred, were
products of nature for purposes of the patent
law. This position appeared to have derived
from the decision of the Patent Office in Ex
parte Latimer, 1889 Dec. Com. Pat. 123, in
which a patent claim for fiber found in the
needle of the Pinus australis was rejected.
Arguments for each party
– Argument by the Petitioner
The Commissioner reasoned that a contrary
result would permit "patents to be obtained upon
the trees of the forest and the plants of the
earth, which of course would be unreasonable
and impossible." it seemed that the Latimer case
came to set forth the general stand taken in
those matters" that plants were natural products
not subject to patent protection. The second
obstacle to patent protection for plants was the
fact that plants were thought not amenable to
the "written description" requirement of the
patent law. Because new plants might differ
from old only in color or perfume, differentiation
by written description was often impossible.
Arguments for each party
– Argument by the Petitioner
Even the passage of the 1970 Plant Variety
Protection 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 could not 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.
The 1970 Act extended that protection. There
was nothing in its language or history which
suggested that it was enacted because S. 101
did not include living things.
Arguments for each party
– Argument by the Petitioner
The petitioner's second argument was
that micro-organisms couldnot qualify
as patentable subject matter until
Congress expressly authorized such
protection. His position rested on the
fact that genetic technology was
unforeseen when Congress enacted S.
101. From this it was argued that
resolution of the patentability of
inventions such as respondent's
should be left to Congress.
Arguments for each party
– Argument by the Petitioner
The legislative process, the petitioner
argued, was best equipped to weigh the
competing economic, social, and scientific
considerations involved, and to determine
whether living organisms produced by
genetic engineering should receive patent
protection. In support of this position, the
petitioner relied on the Court’s decision in
Parker v. Flook, 437 U.S. 584 (1978), and
the statement that the judiciary "must
proceed cautiously when asked to
extend patent rights into areas wholly
unforeseen by Congress."
Arguments for each party
– Argument by the Petitioner
To strengthen his argument, the petitioner,
with the support of amicus, pointed to grave
risks that might get generated by research
endeavors such as of the respondent's.
Scientists, among them Nobel laureates,
were quoted suggesting that genetic
research might pose a serious threat to the
human race or, at the very least, that the
dangers were far too substantial to permit
such research to proceed apace at that time.
Arguments for each party
– Argument by the Petitioner
The Court was told that genetic research and
related technological developments might
spread pollution and disease, that it might
result in a loss of genetic diversity, and that
its practice might tend to depreciate the
value of human life. These arguments were
forcefully, even passionately, presented
reflecting that human ingenuity was unable
to control fully the forces it created. It was
argued that the Court should weigh these
potential hazards in considering whether
respondent's invention was patentable
subject matter under S. 101.
Arguments for each party
– Argument by the Petitioner
But the Court disagreed stating that the grant
or denial of patents on micro-organisms was
not likely to put an end to genetic research
or to its attendant risks. The large amount of
research that has already occurred when no
researcher had sure knowledge that patent
protection would be available suggested that
legislative or judicial deterrence as to
patentability would not deter the scientific
mind from probing into the unknown any
more than Canute could command the tides.
Arguments for each party
– Argument by the Petitioner

Whether respondent's claims were

patentable might determine whether
research efforts were accelerated by the
hope of reward or slowed by want of
incentives, but that was all, it meant.
 Judgment
Justice Burger gave the following opinion on behalf
of the Court
1. Patent laws, receiving their authority from Article
I, Section 8, Clause 8 of the Constitution, had,
throughout history, been broadly interpreted. 
These laws included the Patent Act of 1793, its
1952 revision, and the Plant Patent Act.  The latter
Act permitted the patenting of a plant breeder’s
procedural efforts.
Ø    
  2.The bacterium in question was an artificially
made composition of matter. This was because the
bacterium had capabilities not found in naturally
occurring bacterium.
Ø    
 Judgment
Ø    3. Chakrabarty’s invention was not a law of nature
or naturally occurring phenomena, so it was not
without the realm of patentable material.
Ø    
4. The Court quoted a House and Senate Report,
concerning the Plant Patent Act:
“There is a clear and logical distinction between the
discovery of a new variety of plant and of certain
inanimate things, such, for example, as a new and
useful natural mineral.  The mineral is created
wholly by nature unassisted by man. On the other
hand, a plant discovery resulting from cultivation is
unique, isolated, and is not repeated by nature, nor
can it be reproduced by nature unaided by man.”
 Judgment

5. It was the responsibility of

Congress to specifically set out the
limits of patentable material.
 Judgment
– Whereas Justice William J. Brennan,
alongwith Justice Byron White, Justice
Thurgood Marshall, and Justice Lewis
Franklin Powell expressed their dissent by
stating that that the Congress, by failing to
legislate in the matter, did not intended the
development of a monopoly over a living
organism. The argument of the respondent
Chakarbarthy that Congress had not
anticipated genetic engineering when the
patent law was enacted was not acceptable
to the dissenting judges and they opined that
the Court must be careful to extend patent
protection no further than Congress had
provided.
 Judgment
– The dissenting judges stated that they
did not confront a complete legislative
vacuum and making specific comments
on the 1930 Plant Patent Act and 1970
Plant Variety Protection Act, which
explicitly allowed patents for plants in
certain cases, stated that, the Acts
evidenced Congress' understanding, at
least since 1930, that S. 101 did not
include living organisms.
 Judgment
– If newly developed living organisms not
naturally occurring had been patentable
under S. 101, the plants included in the
scope of the 1930 and 1970 Acts could have
been patented without new legislation and
therefore because the Congress thought it
had to legislate in order to make agricultural
"human-made inventions" patentable and
because the legislation Congress enacted
was limited, it followed that Congress never
meant to make items outside the scope of
the legislation patentable.
 Judgment
– The judges also referred to the 1970
Act and expressed their opinion that
where Congress specifically excluded
bacteria from the coverage of the
1970 Act, it meant that the fact was
that Congress, assumed that animate
objects as to which it had not
specifically legislated could not be
patented and thus excluded bacteria
from the set of patentable organisms.
 My comments about the
judgment
– The Court’s ruling in this case is very
limited and narrow.  The majority judges are
primarily concerned with the artificial
qualities of the subject matter i.e. the
genetically engineered bacteria.  Although
the Court decided the case in favor of the
respondent, they made a point of making a
distinction between natural phenomena
(including natural life forms) and non natural,
unique organisms.  The fact that the case
was decided by a bare majority of the Court
highlights the debatable nature of the subject
matter involved. 
 My comments about the
judgment
– This case helped to open the gates for
patent petitions in respect of genetically
engineered biological material. Although the
Court stated that the decision was based on
the text of the federal patent subject matter
statute, in reality neither statutory text nor
legal precedent supported the issue. In fact,
given the ground breaking nature of the
patent application at issue, a decision against
patentability in the case would have been
both easier to justify and significantly less
controversial than the Court’s actual
decision.
 My comments about the
judgment
– Far from simply applying clear law to
facts, the Court in this case adopted
an aggressive method of interpretation
in order to update a statute in
conformity with changing technology.
Although several Congressional
debates about this case have occurred
in the nearly quarter-century since
the decision, this case was never
overridden by Congress.
 My comments about the
judgment
– It has been suggested by many authorities
on this matter that in science and
technology-related cases in which delay
could significantly slow down the
advancement of the field, the Supreme Court
should interpret federal statutes dynamically
in response to a changing social context, but
should also attempt to conform its
interpretations to legislative preferences in
order to avoid a legislative override.