CASE ANALYSIS

Diamond v/s Dr. Chakrabarty (447 U.S. 303)

FACTS:

In 1972, Ananda Chakrabarty, filed for a patent application. The application asserted 36 claims related to Chakrabarty’s invention of “a bacterium.” This genetically engineered bacterium is capable of breaking down components of crude oil. Because of this property, which is possessed by no naturally occurring bacteria, Chakrabarty’s invention is believed to have significant value for the treatment of oil spills.

Chakrabarty’s patent claims were of three types:

1. Process claims for the method of producing the bacteria;

2. Claims for an inoculum comprised of a carrier material floating on water, such as straw, and the new bacteria; and

3. Claims to the bacteria themselves. (Product)

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. Sec101 .

Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals. Chakrabarty argued that the genetic engineering he did on the bacteria was a form of manufacture, therefore it is a patentable subject matter. However, the Board affirmed the Examiner on the second ground by concluding the Board concluded that Section 101 was not intended to cover living things such as these laboratory created microorganisms.

On appeal by Chakrabarty to the United States Court of Customs and Patent Appeals, it overturned the case in Chakrabarty's favor. It held that "since the micro-organism is a non-naturally occurring manufacture or composition of matter and is a product of human ingenuity having a distinctive name, character and use, the fact that micro-organisms are alive is without legal significance for purposes of the patent law. Moreover, the fact that genetic technology was unforeseen when Congress enacted Section 101 require the conclusion that micro-organism cannot qualify a patentable subject-matter until Congress authorizes such protection"

The presiding officer then filed a petition for writ of certiorari to the Supreme Court.

Issues:

1. Whether genetically engineered microorganism constitutes “manufacture” or “composition of

matter” within the meaning of Section 101 of Title 35 United States Code?

2. Whether micro-organism could qualify as a patentable subject-matter without express authorization by the Congress?

The Court was of the view that when it is a case of statutory construction, the language of the statute should be read first. As the Patent Act did not define the words “manufacture” or “composition of matters” it was held that “unless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning.” It also took into perspective that “the courts should not read into the patent laws limitations and conditions which the legislature has not expressed.”

Guided by these canons of construction, the Court read the term “manufacture” in Section 101 in accordance with its dictionary definition to mean “the production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties, or combinations whether by hand labor or by machinery”. Similarly, “composition of matter” has been construed consistent with its common usage to include “all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders, or solids”. Therefore the Court held that Congress plainly contemplated that the patent laws would be given wide scope.

On reviewing patentable subject matter, the Supreme Court concluded that it did and asserted the principle that “anything under the sun that is made by man” is eligible for patenting. Thus the Court held that the patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under Section 101. Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is not to an unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter – a product of human ingenuity “having a distinctive name, character and use.”

ANALYSIS:

By finding that subject matter derived from nature is eligible for patenting if it is modified by man into something new, useful and unobvious, the Court has wide opened the scope of patentable subject matter. Thus, the court had taken a futuristic approach in understanding the developments that is yet to happen and provided assurance to inventors, investors and researcher to develop in the field by extending the scope of patent to a new level.