Brief Fact Summary.
Chakrabarty (Plaintiff) sought to patent a live, man-made microorganism.
Synopsis of Rule of Law.
A live, man-made microorganism is a non-naturally occurring composition and therefore may be patented.
Facts.
Chakrabarty (Plaintiff) developed a new species of bacterium capable of metabolizing hydrocarbons in a manner unknown in naturally occurring organisms using recombinant DNA processes. The microorganisms exhibited great promise in the treatment of oil spills. Plaintiff applied for a patent, which was denied by the Patent Office (Defendant) on the basis that the microorganisms were products of nature and therefore unpatentable. The Board of Appeals affirmed. The Court of Customs and Patent Appeals reversed, and the United States Supreme Court granted review.
Issue.
May a live, man-made microorganism be patented?
Held.
(Burger, C.J.) Yes. A live, man-made microorganism is a non-naturally occurring composition and therefore may be patented. Resolution of this issue is, regardless of its philosophical implications, strictly a matter of statutory construction. The relevant statute here, 35 U.S.C. § 101, defines as patentable any new and useful “manufacture†or “composition of matter,†among other things. It is a basic rule of construction that words are given their natural, ordinary meanings. There can be little doubt that microorganisms produced by recombinant DNA technology may be said to be manufactured and to be compositions of matter. For purposes of patent law, the fact they are alive is not relevant. Although it is true that naturally-occurring products may not be patented, a genetically-engineered microorganism is not naturally occurring. While this Court recognizes that recombinant DNA technology is a controversial field, it is ill-equipped to balance the competing values and interests manifested therein; this is a task for Congress. Since the patent laws clearly include materials such as are at issue here within their scope, and no specific law exists to exclude it, the only appropriate holding is that recombinant DNA-produced microorganisms are patentable. Affirmed.
Dissent.
(Brennan, J.) Congress, in enacting the Plant Patent Act in 1930 and the Plant Variety Protection Act in 1970, has indicated that bacteria are excluded from patentability. Patent protection must not be extended further than Congress intended. Congress has not left a legislative vacuum regarding the type of patent at issue. The Plant Patent Act gives patent protection to developers of certain asexually reproduced plants. The Plant Variety Protection Act extends protection to certain new plant varieties capable of sexual reproduction. Therefore, contrary to the majority’s assertion, the patent at issue does not pose the problem of “unanticipated inventions.â€Â In these two Acts, Congress has addressed the general problem of patenting animate inventions and has chosen carefully limited language granting protection to some kinds of discoveries, but specifically excluding others. These Acts show strong evidence of a congressional limitation that excludes bacteria from patentability. The Acts evidence Congress’s understanding, at least since 1930, that §101 does not include living organisms. If newly developed living organisms not naturally occurring had been patentable under §101, the plants included in the scope of the 1930 and 1970 Acts could have been patented without new legislation. Therefore, Congress believed that it had to legislate in order to make agricultural “human-made inventions†patentable, and, because the legislation Congress enacted is limited, it follows that Congress never intended to make items outside the scope of the legislation patentable.
Discussion.
The general rule is that things occurring naturally in the universe may not be patented. Neither a type of plant occurring naturally nor a natural principal could be patented. The laws of motion could not have been patented by Newton. This legal principle appears straightforward, but as demonstrated by this case, modern science has made it less so.