Diamond v.Chakrabarty

United Sates Supreme Court,1980

447 U.S.303

MR.CHIEF JUSTICE BURGER delivered the opinion of the Court.

We granted certiorari to determine whether a live,human-made micro-organism is patentable subject matter under 35 U.S.C.§ 101.

I

In 1972,respondent Chakrabarty,a microbiologist,filed a patent application,assigned to the General Electric Company.The application asserted 36 claims related to Chakrabarty’s invention of“a bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids,each of said plasmids providing a separate hydrocarbon degradative pathway.”[1] This humanmade,genetically engineered bacterium is capable of breaking down multiple 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.[2]

Chakrabarty’s patent claims were of three types: first,process claims for the method of producing the bacteria; second,claims for an inoculum comprised of a carrier material floating on water,such as straw,and the new bacteria; and third,claims to the bacteria themselves.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.§ 101.

Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals,and the Board affirmed the Examiner on the second ground.[3] Relying on the legislative history of the 1930 Patent Act,in which Congress extended patent protection to certain asexually reproduced plants,the Board concluded that§ 101 was not intended to cover living things such as these laboratory created micro-organisms.

The Court of Customs and Patent Appeals,by a divided vote,reversed on the authority of its prior decision in In re Bergy,563 F.2d 1031 (1978),which held that“the fact that microorganisms … are alive … [is] without legal significance”for purposes of the patent law.[4] Subsequently,we granted the Government’s petition for certiorari in Bergy,vacated the judgment,and remanded the case“for further consideration in light of Parker v.Flook,(1978).The Court of Customs and Patent Appeals then vacated its judgment in Chakrabarty and consolidated the case with Bergy for reconsideration.After re-examining both cases in the light of our holding in Flook,that court,with one dissent,reaffirmed its earlier judgments.

The Government again sought certiorari,and we granted the writ as to both Bergy and Chakrabarty.Since then,Bergy has been dismissed as moot,leaving only Chakrabarty for decision.

II

The question before us in this case is a narrow one of statutory interpretation requiring us to construe 35 U.S.C.§ 101 ….

Specifically,we must determine whether respondent’s microorganism constitutes a“manufacture”or“composition of matter”within the meaning of the statute.

[This case followed two decisions in which the Supreme Court had reversed Court of Customs and Patent Appeals decisions construing § 101 broadly.They wrote:

Gottschalk v.Benson,(1972).The Patent Office had rejected an application for a patent claiming a method of programming a general-purpose digital computer to convert code from binary-coded decimal form into pure binary form.The Court of Customs and Patent Appeals had reversed,holding that the claim was for a useful process.The Supreme Court,in turn,reversed the Court of Customs and Patent Appeals and upheld the Patent Office position.

All information is stored in a computer in binary or“on-off”form.The information“on”or“off”can be treated as equivalent to 0 or 1,and 0 and 1 can be used together to represent all numbers in the form 0,1,10,11,100,101,111,and so on.These numbers can in turn be used in codes to represent letters or numbers.Binary-coded decimal form is a decimal number in which each position in the decimal number is represented by the appropriate binary number for the number in that position.This is a useful way for a computer to store numbers when they are to be displayed or printed in decimal form.The binary-coded decimal form,however,requires more machine memory than the pure binary form,so for purposes of storing the numbers or performing calculations it is useful to convert the numbers from binary-coded decimal form to pure binary form.

The claim of the patent was for a series of mechanical,computational steps which,when followed,converted a number from binary coded decimal form to pure binary form.The court read the claim as covering any use of the computational steps,whether performed with or without a computer.(The claim was limited to a“data processing method,”which could have been read to limit the procedure to use in data processing,i.e.,use on a machine,since we do not normally speak of penciled calculations as“data processing.”)

There are passages in the opinion which suggest that the Court thought it was holding that all programs for digital computers are unpatentable subject matter.For instance:“If these programs are to be patentable,considerable problems are raised which only committees of Congress can manage,for broad powers of investigations are needed,including hearings which canvass the wide variety of views which those operating in this field entertain.”

But there were other passages that suggested that the Court was only holding that a claim on a formula,not limited to a particular use,was invalid.“Here the‘process’ claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion.The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or futuredevised machinery or without any apparatus.What we come down to in a nutshell is the following.It is conceded that one may not patent an idea.But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case.The mathematical formula involved here has no substantial practical application except in connection with a digital computer,which means that if the judgment below is affirmed,the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

Gottschalk was followed by Parker v.Flook,437 U.S.584 (1978).The Patent Office rejected an application for a method for updating alarm limits.The C.C.P.A.again reversed,and the Supreme Court again reversed the C.C.P.A.

As in Gottschalk the only novel element in the patent was a formula,in this case a formula which used a number to generate another number.But unlike Gottschalk,the claim was drafted to read only on the use of the formula in connection with the computation of process alarms limits in the catalytic chemical conversion of hydrocarbons.This claim,argued the applicant,did not“wholly preempt the mathematical formula.”

The Court’s opinion clearly held that a patent on a computer program was not patentable subject matter.“Difficult questions of policy concerning the kinds of programs that may be appropriate for patent protection and the form and duration of such protection can be answered by Congress on the basis of current empirical data not equally available to this tribunal.”]

III

Guided by … canons of construction,this Court has read the term“manufacture”in § 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.”In choosing such expansive terms as“manufacture”and“composition of matter,”modified by the comprehensive“any,”Congress plainly contemplated that the patent laws would be given wide scope.

The relevant legislative history also supports a broad construction.The Patent Act of 1793,authored by Thomas Jefferson,defined statutory subject matter as“any new and useful art,machine,manufacture,or composition of matter,or any new or useful improvement [thereof].”The Act embodied Jefferson’s philosophy that“ingenuity should receive a liberal encouragement.”V Writings of Thomas Jefferson,at 75-76.Subsequent patent statutes in 1836,1870,and 1874 employed this same broad language.In 1952,when the patent laws were recodified,Congress replaced the word“art”with“process,”but otherwise left Jefferson’s language intact.The Committee Reports accompanying the 1952 act inform us that Congress intended statutory subject matter to“include anything under the sun that is made by man.”

This is not to suggest that § 101 has no limits or that it embraced every discovery.The laws of nature,physical phenomena,and abstract ideas have been held not patentable.Thus,a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.Likewise,Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity.Such discoveries are“manifestations of … nature,free to all men and reserved exclusively to none.”

Judged in this light,respondent’s micro-organism plainly qualifies as patentable subject matter.His claim is not to a hitherto unknown natural phenomenon,but to a nonnaturally occurring manufacture or composition of matter – a product of human ingenuity“having a distinctive name,character [and] use.”The point is underscored dramatically by comparison of the invention here with that in Funk.There,the patentee had discovered that there existed in nature certain species of root-nodule bacteria which did not exert a mutually inhibitive effect on each other.He used that discovery to produce a mixed culture capable of inoculating the seeds of leguminous plants.Concluding that the patentee had discovered“only some of the handiwork of nature,”the Court ruled the product non patentable:

Each of the species of root-nodule bacteria contained in the package infects the same group of leguminous plants which it always infected.No species acquires a different use.The combination of the six species produces no new bacteria,no change in the six bacteria,and no enlargement of the range of their utility.Each species has the same effect it always had.The bacteria perform in their natural way.Their use in combination does not improve in any way their natural functioning.They serve the same ends nature originally provided and act quite independently of any effort by the patentee.333 U.S.,at 131.

Here,by contrast,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 § 101.

IV

Two contrary arguments are advanced,neither of which we find persuasive.

(A)

The Government’s first argument rests on the enactment of the 1930 Plant Patent Act,which afforded patent protection to certain asexually reproduced plants,and the 1970 Plant Variety Protection Act,which authorized patents for certain sexually reproduced plants but excluded bacteria from its protection.In the Government’s view,the passage of these Acts evidences congressional understanding that the terms“manufacture”or“composition of matter”do not include living things; if they did,the Government argues,neither Act would have been necessary.

We reject this argument.Prior to 1930,two factors were thought to remove plants from patent protection.The first was the belief that plants,even those artificially bred,were products of nature for purposes of the patent law.This position appears to have derived from the decision of the patent office in Ex parte Latimer,1889 C.D.123,in which a patent claim for fiber found in the needle of the Pinus australis was rejected.The Commissioner reasoned that a contrary result would permit“patents [to] be obtained upon the trees of the forests and the plants of the earth,which of course would be unreasonable and impossible.”The Latimer case,it seems,came to“se[t] forth the general stand taken in these matters”that plants were natural products not subject to patent protection.The second obstacle to patent protection for plants was the fact that plants were thought not amenable to the“written description”requirement of the patent law.Because new plants may differ from old only in color or perfume,differentiation by written description was often impossible.

In enacting the Plant Patent Act,Congress addressed both of these concerns.It explained at length its belief that the work of the plant breeder“in aid of nature”was patentable invention.And it relaxed the written description requirement in favor of“a description … as complete as is reasonably possible.”No Committee or Member of Congress,however,expressed the broader view,now urged by the Government,that the terms“manufacture”or“composition of matter”exclude living things.The sole support for that position in the legislative history of the 1930 Act is found in the conclusory statement of Secretary of Agriculture Hyde,in a letter to the Chairmen of the House and Senate Committees considering the 1930 Act,that“the patent laws … at the present time are understood to cover only inventions or discoveries in the field of inanimate nature.”Secretary Hyde’s opinion,however,is not entitled to controlling weight.His views were solicited on the administration of the new law and not on the scope of patentable subject matter– an area beyond his competence.Moreover,there is language in the House and Senate Committee reports suggesting that to the extent Congress considered the matter it found the Secretary’s dichotomy unpersuasive.The reports observe:

There is a clear and logical distinction between the discovery of a new variety of plant and of certain inanimate things, such,for example,as a new and useful natural mineral.The mineral is created wholly by nature unassisted by man….On the other hand,a plant discovery resulting from cultivation is unique,isolated,and is not repeated by nature,nor can it be reproduced by nature unaided by man….

Congress thus recognized that the relevant distinction was not between living and inanimate things,but between products of nature,whether living or not,and human-made inventions.Here respondent’s micro-organism is the result of human ingenuity and research.Hence,the passage of the Plant Patent Act affords the Government no support.

Nor does the passage of the 1970 Plant Variety Protection Act support the Government’s position.As the Government acknowledges,sexually reproduced plants were not included under the 1930 Act because new varieties could not be reproduced true-to-type through seedlings.By 1970,however,it was generally recognized that true-to-type reproduction was possible and that plant patent protection was therefore appropriate.The 1970 Act extended that protection.There is nothing in its language or history to suggest that it was enacted because § 101 did not include living things.

In particular,we find nothing in the exclusion of bacteria from plant variety protection to support the Government’s position….The legislative history gives no reason for this exclusion.As the Court of Customs and Patent Appeals suggested,it may simply reflect congressional agreement with the result reached by that court in deciding In re Arzberger,112 F.2d 834 (1940),which held that bacteria were not plants for the purposes of the 1930 Act.Or it may reflect the fact that prior to 1970 the Patent Office had issued patents for bacteria under § 101.[5] In any event,absent some clear indication that Congress“focused on [the] issues… directly related to the one presently before the Court,”there is no basis for reading into its actions an intent to modify the plain meaning of the words found in § 101.

(B)

The Government’s second argument is that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection.Its position rests on the fact that genetic technology was unforeseen when Congress enacted § 101.From this it is argued that resolution of the patentability of inventions such as respondent’s should be left to Congress.The legislative process,the Government argues,is best equipped to weigh the competing economic,social,and scientific considerations involved,and to determine whether living organisms produced by genetic engineering should receive patent protection.In support of this position,the Government relies on our recent holding in Parker v.Flook,437 U.S.584 (1978),and the statement that the judiciary“must proceed cautiously when … asked to extend patent rights into areas wholly unforeseen by Congress.”

It is,of course,correct that Congress,not the courts,must define the limits of patentability; but it is equally true that once Congress has spoken it is“the province and duty of the judicial department to say what the law is.”Congress has performed its constitutional role in defining patentable subject matter in § 101;we perform ours in construing the language Congress has employed.In so doing,our obligation is to take statutes as we find them,guided,if ambiguity appears,by the legislative history and statutory purpose.Here,we perceive no ambiguity.The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting“the Progress of Science and the useful Arts”with all that means for the social and economic benefits envisioned by Jefferson.Broad general language is not necessarily ambiguous when congressional objectives require broad terms.

Nothing in Flook is to the contrary.That case applied our prior precedents to determine that a“claim for an improved method of calculation,even when tied to a specific end use,is unpatentable subject matter under § 101.”The Court carefully scrutinized the claim at issue to determine whether it was precluded from patent protection under“the principles underlying the prohibition against patents for ‘ideas’ or phenomena of nature.”We have done that here.Flook did not announce a new principle that inventions in areas not contemplated by Congress when the patent laws were enacted are unpatentable per se.

To read that concept into Flook would frustrate the purposes of the patent law.This Court frequently has observed that a statute is not to be confined to the“particular application[s] … contemplated by the legislators.”This is especially true in the field of patent law.A rule that unanticipated inventions are without protection would conflict with the core concept of the patent law that anticipation undermines patentability.Mr.Justice Douglas reminded that the inventions most benefiting mankind are those that“push back the frontiers of chemistry,physics,and the like.”Congress employed broad general language in drafting § 101 precisely because such inventions are often unforeseeable.[6]

To buttress its argument,the Government,with the support of amicus,points to grave risks that may be generated by research endeavors such as respondent’s.The briefs present a gruesome parade of horribles.Scientists,among the Nobel laureates,are quoted suggesting that genetic research may pose a serious threat to the human race,or,at the very least,that the dangers are far too substantial to permit such research to proceed apace at this time.We are told that genetic research and related technological developments may spread pollution and disease,that it may result in a loss of genetic diversity,and that its practice may tend to depreciate the value of human life.These arguments are forcefully,even passionately presented; they remind us that,at times,human ingenuity seems unable to control fully the forces it creates – that with Hamlet,it is sometimes better“to bear those ills we have than fly to others that we know not of.”

It is argued that this Court should weigh these potential hazards in considering whether respondent’s invention is patentable subject matter under § 101.We disagree.The grant or denial of patents on micro-organisms is not likely to put an end to genetic research or to its attendant risks.The large amount of research that has already occurred when no researcher had sure knowledge that patent protection would be available suggests that legislative or judicial fiat as to patentability will not deter the scientific mind from probing into the unknown any more than Canute could command the tides.Whether respondent’s claims are patentable may determine whether research efforts are accelerated by the hope of reward or slowed by want of incentives,but that is all.

What is more important is that we are without competence to entertain these arguments – either to brush them aside as fantasies generated by fear of the unknown,or to act on them.The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation,examination,and study that legislative bodies can provide and courts cannot.That process involves the balancing of competing values and interests,which in our democratic system is the business of elected representatives.Whatever their validity,the contentions now pressed on us should be addressed to the political branches of the government,the Congress and the Executive,and not to the courts.

Accordingly,the judgment of the Court of Customs and Patent Appeals is affirmed.

Affirmed.

MR.JUSTICE BRENNAN,with whom MR.JUSTICE WHITE,MR.JUSTICE MARSHALL,and MR.JUSTICE POWELL,join,dissenting.

The sweeping language of the Patent Act of 1793,as re-enacted in 1952,is not the last pronouncement Congress had made in this area.In 1930 Congress enacted the Plant Patent Act affording patent protection to developers of certain asexually reproduced plants.In 1970 Congress enacted the Plant Variety Protection Act to extend protection to certain new plant varieties capable of sexual reproduction.Thus,we are not dealing – as the Court would have it – with the routine problem of“unanticipated inventions.”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 strongly evidence a congressional limitation that excludes bacteria from patentability.

Notes and Comments

1.If living micro-organisms can be patented,then why not any living thing?Pat.No.4,736,866,granted to Harvard University,claims a living mouse,particularly suitable for cancer research because it develops cancers not naturally occurring in mice.If a rodent,why not a mammal such as a cow which gives unusually good milk.And if a cow,why not a man,perhaps improved to exhibit more satisfactory social behavior? On April 21,1987,the Commissioner issued a notice taking the position that all nonnaturally occurring nonhuman multicellular organisms,including animals,are patentable.1077 Pat.& Trdmrk Off.Gazette 24.The position provoked hearings in Congress and attention in the press.The issue is essayed in Robert P.Merges,Intellectual Property in Higher Life Forms:The Patent System and Controversial Technologies,47 Md.L.Rev.1051 (1988);and Note,Altering Nature’s Blueprints for Profit: Patenting Multicellular Animals,74 Va.L.Rev.1327 (1988).

2.The interest in animal patents has arisen as a result of techniques of biotechnology,which enable scientists to manipulate the genetic structure of living cells in order to produce biological products including animals with predictable and non-naturally occurring properties.This new technology has generated large investments as well as much patent litigation as firms compete to establish a position in what they hope will be a very profitable technology.An example of a biotechnology patent that has been held valid is Patent No.4,376,110 for immunometric assays using monoclonal antibodies,held valid in Hybritech Inc.v Monoclonal Antibodies,802 F.2d 1367 (Fed.Cir.1986),cert.denied 480 U.S.947(1987).