Diamond v. Chakrabarty

On June 16, 1980, the U.S. Supreme Court decided the case of Diamond v. Chakrabarty (Chakrabarty), in which it affirmed the patentability of a live bacterium modified in a [Page 128]laboratory by design. The 5–4 decision affirming the patentability is of interest because of the subject of the patent itself as well as its novelty. The details and the reasons for the dissent when compared with the majority reasons shed light on some of the issues and implications of the decision.

The case involved a submission for three types of patents, of which two were granted at first instance without dissent. It is the third type that was the issue in the appeals. This third type of patent claim was for the bacterium itself. The inventor, a microbiologist named Ananda Mohan Chakrabarty, used a bacterium from the genus Pseudomonas and engineered it to carry at least two stable energy-generating plasmids, each of which provide a separate pathway to degrade hydrocarbons.

Plasmids carry DNA, and when introduced into the bacterium, the proteins in the DNA activate and override the native DNA, enabling the bacterium to operate in ways consistent with the DNA in the plasmid, which may be different than the ways in which the bacterium would usually operate. To stabilize the presence of the plasmid in the bacterium and prevent rejection, an antibiotic is usually required. When the plasmid is removed or rejected, the bacterium resumes operating as it would usually. Although the bacterium is a host to the plasmid(s), they have a symbiotic relationship.

Footnote 1 in the majority decision states:

Two points are worth noting. One is that the rights to the patent were assigned to General Electric and the other is that similar modifications to living plant cells such as yeast are patentable. The material difference here is that the patent sought is for a microorganism and not a plant cell.

The reasons supplied by the previous levels of decision makers are recounted in the decision of the Supreme Court and may be helpful in appreciating the thinking of the authorities. Including the Supreme Court, there were four levels of decisions. The first was the Patent Examiner, the second was the Patent Office Board of Appeals, the third was the Court of Customs and Patent Appeals, and the fourth was the U.S. Supreme Court. The patent was denied by the first two, granted by the third, and affirmed by the fourth.

According to the Patent Examiner, microorganisms are “products of nature,” and as living things, they are not patentable subject matter that could be included under the legislation (35 U.S.C. § 101). At first instance, therefore, the claim was denied. The Patent Office Board of Appeals affirmed the Patent Examiner's decision on the second ground that living things are not patentable under the applicable legislation. In doing so, the second authority relied on the 1930 Plant Patent Act, which it interpreted to mean that Congress did not intend to include laboratory-created microorganisms as patentable subjects.

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