Patentability of genetically modified micro-organisms

Whether genetically modified microorganisms can be patented?

This was the question came up for its consideration before the Supreme Court of America in Diamond v. Chakrabarty, 447 U.S. 303 (1980). Apex court held that, by virtue of 35 U.S.C. Section 101, live human-made microorganism is a patentable subject matter. Microorganisms which is the subject matter of dispute in this case, constitutes a manufacture or composition of matter within the provision of 35 U.S.C 101.

Diamond v. Chakrabarty

Facts: Ananda Mohan Chakrabarty, a Genetic engineer from General Electric (GE) had developed a microorganisms (bacterium) capable of breaking down crude oil, where it can be useful in treating oil spills. However, the patent application was filed by GE indicating Chakrabarty as inventor was rejected by the patent office on the ground that, a living microorganisms were generally understood as a non-patentable subject matter within the meaning of Section 101 of 35 U.S.C.

Though the Board of Patent Appeals and Interferences agreed with the decision of the patent office, the States Court of Customs and Patent Appeals accepted the view of GE. Court of Appeal observed that, the fact that microorganisms are alive is without legal significance for purposes of the patent law. An appeal against this decision of the Court of Appeal was moved by Sidney A. Diamond (Commissioner of Patents and Trademarks) before the Supreme Court of United States of America.

Opinion of the Court

While delivering the majority opinion, the apex court held that, whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Re, to United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933), the apex court warned that, the courts should not read into the patent laws limitations and conditions which the legislature has not expressed.

While interpreting the scope of the statutory provision, the apex court observed that, while 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. Thus, it was opined by the US Supreme Court that, the Congress had intended patentable subject matter to include anything under the sun that is made by man. Thus, the bacterium invented by Ananda Mohan Chakrabarty falls within the meaning of patentable subject matter.

Dissenting opinion of the court noted that, as per the legislative records, the US Congress didn’t have an intention to patent a living organism. Therefore, the Court must be careful to extend patent protection no further than what Congress has provided.