Diamond v. Chakrabarty
   HOME

TheInfoList



OR:

''Diamond v. Chakrabarty'', 447 U.S. 303 (1980), was a
United States Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...
case dealing with whether living organisms can be
patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
ed. Writing for a five-justice majority, Chief Justice
Warren E. Burger Warren Earl Burger (September 17, 1907 – June 25, 1995) was an American attorney and jurist who served as the 15th chief justice of the United States from 1969 to 1986. Born in Saint Paul, Minnesota, Burger graduated from the William Mitchell ...
held that human-made bacteria could be patented under the patent laws of the United States because such an invention constituted a "manufacture" or "composition of matter". Justice
William J. Brennan Jr. William Joseph "Bill" Brennan Jr. (April 25, 1906 – July 24, 1997) was an American lawyer and jurist who served as an Associate Justice of the Supreme Court of the United States from 1956 to 1990. He was the seventh-longest serving justice ...
, along with Justices
Byron White Byron "Whizzer" Raymond White (June 8, 1917 April 15, 2002) was an American professional football player and jurist who served as an associate justice of the U.S. Supreme Court from 1962 until his retirement in 1993. Born and raised in Color ...
,
Thurgood Marshall Thurgood Marshall (July 2, 1908 – January 24, 1993) was an American civil rights lawyer and jurist who served as an associate justice of the Supreme Court of the United States from 1967 until 1991. He was the Supreme Court's first African-A ...
, and
Lewis F. Powell Jr. Lewis Franklin Powell Jr. (September 19, 1907 – August 25, 1998) was an American lawyer and jurist who served as an Associate Justice of the Supreme Court of the United States from 1972 to 1987. Born in Suffolk, Virginia, he graduat ...
, dissented from the Court's ruling, arguing that because Congress had not expressly authorized the patenting of biological organisms, the Court should not extend patent law to cover them. In the decades since the Court's ruling, the case has been recognized as a landmark case for U.S. patent law, with industry and legal commentators identifying it as a turning point for the biotechnology industry.


Background

Genetic engineer
Ananda Mohan Chakrabarty Ananda Mohan Chakrabarty ( bn, আনন্দমোহন চক্রবর্তী ''Ānandamōhan Cakrabartī''), PhD (4 April 1938 – 10 Jul 2020) was an Indian American microbiologist, scientist, and researcher, most notable for his w ...
, working for
General Electric General Electric Company (GE) is an American multinational conglomerate founded in 1892, and incorporated in New York state and headquartered in Boston. The company operated in sectors including healthcare, aviation, power, renewable energ ...
, developed a
bacterium Bacteria (; singular: bacterium) are ubiquitous, mostly free-living organisms often consisting of one biological cell. They constitute a large domain of prokaryotic microorganisms. Typically a few micrometres in length, bacteria were among ...
(derived from the ''
Pseudomonas ''Pseudomonas'' is a genus of Gram-negative, Gammaproteobacteria, belonging to the family Pseudomonadaceae and containing 191 described species. The members of the genus demonstrate a great deal of metabolic diversity and consequently are able ...
''
genus Genus ( plural genera ) is a taxonomic rank used in the biological classification of extant taxon, living and fossil organisms as well as Virus classification#ICTV classification, viruses. In the hierarchy of biological classification, genus com ...
and now known as ''
Pseudomonas putida ''Pseudomonas putida'' is a Gram-negative, rod-shaped, saprotrophic soil bacterium. Based on 16S rRNA analysis, ''P. putida'' was taxonomically confirmed to be a ''Pseudomonas'' species (''sensu stricto'') and placed, along with several other ...
'') capable of breaking down
crude oil Petroleum, also known as crude oil, or simply oil, is a naturally occurring yellowish-black liquid mixture of mainly hydrocarbons, and is found in geological formations. The name ''petroleum'' covers both naturally occurring unprocessed crude ...
, which he proposed to use in treating
oil spill An oil spill is the release of a liquid petroleum hydrocarbon into the environment, especially the marine ecosystem, due to human activity, and is a form of pollution. The term is usually given to marine oil spills, where oil is released into th ...
s. General Electric filed a patent application for the bacterium in the United States listing Chakrabarty as the inventor, but the application was rejected by a patent examiner, because under patent law at that time, living things were generally understood to not be
patentable subject matter Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the inv ...
under 35 U.S.C. § 101. General Electric and Chakrabarty appealed the examiner's decision to the
Board of Patent Appeals and Interferences The Board of Patent Appeals and Interferences (BPAI) was an administrative law body of the United States Patent and Trademark Office (USPTO) which decided issues of patentability. Under the America Invents Act, the BPAI was replaced with the Pat ...
. The Board however agreed with the examiner that the bacterium was not patentable under current law. General Electric and Chakrabarty thereafter appealed the Board's decision to the
United States Court of Customs and Patent Appeals The United States Court of Customs and Patent Appeals (CCPA) was a United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes. History The CCPA began as the United States Court of Customs ...
. This time, General Electric and Chakrabarty prevailed with the court overturning the examiner's decision and holding "the fact that
micro-organisms A microorganism, or microbe,, ''mikros'', "small") and ''organism'' from the el, ὀργανισμός, ''organismós'', "organism"). It is usually written as a single word but is sometimes hyphenated (''micro-organism''), especially in olde ...
are alive is without legal significance for purposes of the patent law." The Patent Office, in the name of its Commissioner, Sidney A. Diamond, appealed this decision to the Supreme Court.


Supreme Court opinion

The Supreme Court heard oral argument from the parties on March 17, 1980 and issued its decision on June 16, 1980. In a 5–4 ruling, the Court ruled in favor of Chakrabarty and affirmed the decision of the Court of Customs and Patent Appeals. Writing for the majority, Chief Justice
Warren E. Burger Warren Earl Burger (September 17, 1907 – June 25, 1995) was an American attorney and jurist who served as the 15th chief justice of the United States from 1969 to 1986. Born in Saint Paul, Minnesota, Burger graduated from the William Mitchell ...
began by noting that 35 U.S.C. § 101 allowed inventors to obtain patents for a "manufacture" or "composition of matter". The majority noted that while these words indicated that Congress intended for the patent laws to be given a "broad scope", this scope was not unlimited and that, under the Court's precedents, "laws of nature, physical phenomena, and abstract ideas" were not patentable. However, the Court held that these precedents were inapplicable to Chakrabarty's case as he was not trying to patent a "natural phenomena" but rather a human-made bacterium that he, himself, had developed. The majority contrasted this outcome with the one reached nearly 50 years prior in ''
Funk Bros. Seed Co. v. Kalo Inoculant Co. ''Funk Brothers Seed Co. v. Kalo Inoculant Co.'', 333 U.S. 127 (1948), is a United States Supreme Court decision in which the Court held that a facially trivial implementation of a natural principle or phenomenon of nature is not eligible for a p ...
'', where the Court had rejected a patent application for the discovery of a naturally occurring bacterium that could be used to improve crops. Unlike the patentee in ''Funk Bros.'', the Supreme Court here held that Chakrabarty had not merely discovered the bacteria's existence, he had created it himself and adapted it to a particular purpose. Justice
William J. Brennan Jr. William Joseph "Bill" Brennan Jr. (April 25, 1906 – July 24, 1997) was an American lawyer and jurist who served as an Associate Justice of the Supreme Court of the United States from 1956 to 1990. He was the seventh-longest serving justice ...
, joined by Justices
Byron White Byron "Whizzer" Raymond White (June 8, 1917 April 15, 2002) was an American professional football player and jurist who served as an associate justice of the U.S. Supreme Court from 1962 until his retirement in 1993. Born and raised in Color ...
,
Thurgood Marshall Thurgood Marshall (July 2, 1908 – January 24, 1993) was an American civil rights lawyer and jurist who served as an associate justice of the Supreme Court of the United States from 1967 until 1991. He was the Supreme Court's first African-A ...
, and
Lewis F. Powell Jr. Lewis Franklin Powell Jr. (September 19, 1907 – August 25, 1998) was an American lawyer and jurist who served as an Associate Justice of the Supreme Court of the United States from 1972 to 1987. Born in Suffolk, Virginia, he graduat ...
, dissented from the Court's ruling. Looking at the legislative history of the patent laws, Justice Brennan concluded that Congress had demonstrated an intent to exclude living organisms from the scope of the country's patent laws. Justice Brennan also expressed concern that the Court was extending patent protections into areas not expressly authorized by Congress and that this constituted an inappropriate extension of monopoly patent power.


Impact

In the decades following the Supreme Court's ruling, commentators have classified ''Diamond v. Chakrabarty'' as an important legal decision, particularly with respect to the patent laws and the biotechnology industry. In 2018, ''Time'' identified the decision as one of 25 important moments in American history, with Professor Gerardo Con Diaz remarking that the decision allowed "inventors at private and public institutions alike to obtain patents for genetically modified organisms — from plants and animals for laboratory research, to many foods available in supermarkets today" and allowed biotechnology firms to protect their developments in new ways. Writing for '' IP Watchdog'' on the decision's 30th anniversary, Gene Quinn called the decision a "turning point for the biotech industry" and praised the Court's ruling as "emblematic of the need for an expansive view of what is patentable subject matter." Likewise, the
Biotechnology Innovation Organization The Biotechnology Innovation Organization (BIO) is the largest advocacy association in the world representing the biotechnology industry. It was founded in 1993 as the Biotechnology Industry Organization, and changed its name to the Biotechnology ...
praised the decision as being "instrumental in spurring the creation of a dynamic and flourishing biotech industry." ''Nature'' similarly noted that, at least according to industry participants, “without ''Diamond v. Chakrabarty'', commercial biotechnology based on recombinant DNA technologies would not exist today.” However, the Supreme Court's ruling has also attracted some criticism from scholars who believe the Court extended patent law in a way that Congress did not authorize. Writing in the
Ohio State Law Journal The Michael E. Moritz College of Law is the professional graduate law school of the Ohio State University, a public land-grant research university in Columbus, Ohio. Founded in 1891, the school is located in Drinko Hall on the main campus of the ...
, Frank Darr criticized the Court's decision as containing "serious interpretive problems" and "reflect nga policy choice" by the majority rather than a neutral legal analysis.


Further criticisms

George Mason University's Center for Intellectual Property and Innovation Policy has pointed out that, in the wake of ''Diamond v. Chakrabarty,'' the courts have continued to affirm the right of biotech industry developers to continue to claim ownership of altered biological life, while clarifying some limits in ''Mayo v. Prometheus'' and ''AMP v. Myriad.'' The Center has expressed concern over what may be interpreted as judicial activism, with this ambitious legal thrust in advance of Congressional ability to thoughtfully consider appropriate legislation. While cases subsequent to ''Chakrabarty'' have provided some safeguards, such as forbidding the patenting of "limited DNA sequences," concerns have arisen that these safeguards do not go far enough, and that "biopiracy" of the human genome could take place, especially in an era of global health crisis demanding a rapid pharmaceutical response. A legal collaboration at the University of Pittsburgh suggests that it "is a stretch" to label such presumptuous genomic editing as outright slavery. However, in view of the fact that such editing in its most contemporary form may include the insertion of what has been termed by the industry as an entire "operating platform," concerns may continue.


See also

*
List of United States Supreme Court cases, volume 447 This is a list of all the United States Supreme Court cases from volume 447 of the ''United States Reports The ''United States Reports'' () are the official record ( law reports) of the Supreme Court of the United States. They include rulings, ...
*
Genetic engineering in the United States The United States is the largest grower of commercial crops that have been genetically engineered in the world, but not without domestic and international opposition. Monsanto, based in Creve Coeur, Missouri in the United States, is the leading p ...


References


Further reading

*. *.


External links

* {{General Electric, state=collapsed United States biotechnology case law Genetically modified organisms United States patent case law United States Supreme Court cases 1980 in the environment 1980 in United States case law United States environmental case law Genetic engineering in the United States General Electric litigation United States Supreme Court cases of the Burger Court Biological patent law Oil spill remediation technologies Bacteria and humans