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
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
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
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.
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
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.