Intellectual Property Rights - the Diamond Vs. Chakrabarty Case Study

The Diamond Vs. Chakrabarty Case Study

Diamond v. Chakrabarty, 447 U.S. 303 (1980), was a United States Supreme Court case dealing with whether genetically modified organisms can be patented.

Prior to 1980, living organisms and life forms had generally been assumed to be ineligible for patent protection. In keeping with this understanding, pharmaceutical firms that used microbial strains to produce antibiotics had typically sought patent protection on methods of production, but not on the strains themselves. However, the basis for exclusion that had been articulated in judicial precedents was not that the organisms were "living," but rather that they were "products of nature". During the year, respondent Ananda Chakrabarty, a microbiologist and genetic engineer, developed a bacterium capable of breaking down multiple components of crude oil, a property which is possessed by no naturally occurring bacteria. Due to this property of the bacterium, Chakrabarty's invention is believed to have significant value for the treatment of oil spills. The versatility of these "novel" microorganisms was demonstrated by the substantial extent to which degradation of complex hydrocarbons -such as crude oil -was achieved.

Consequently, during the year, Ananda Chakrabarty filed a patent application, to The United States Patent and Trademark Office (USPTO), assigned to the General Electric Company. The application asserted claims related to his invention. Chakrabarty's patent claims were of three types:

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

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

3. Claims to the bacteria themselves.

The Patent Examiner for the United States Patent and Trademark Office allowed the claims falling into the first two categories, but rejected claims for the bacteria (the third category). His decision was based on the following two grounds:

1. That micro-organisms are "products of nature," and;

2. That as living things they are not patentable subject matter under the U.S. Charter.

Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals, and the Board affirmed the Examiner on the second ground that living things are not patentable subject matter under the U.S. Charter (35 U.S.C. § 101). The Board henceforth concluded that this section was not intended to cover living things such as these laboratory created microorganisms; as well as the organism was a living creature and hence is not patentable.

Title 35 U.S.C. § 101 provides for the issuance of a patent to a person who invents or discovers "any" new and useful "manufacture" or "composition of matter."

Even though the Board of Patent Appeals and Interferences agreed with the original decision; the United States Court of Customs and Patent Appeals overturned the case in Chakrabarty's favour. The Diamond and Chakrabarty case as a consequence led to the decision being altered. According to the U.S. Charter (35 U.S.C. 101): "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 thereof, subject to the conditions and requirements of this title." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court. The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980. As a result, the Diamond vs. Chakrabarty case changed the original thinking with the 5 to 4 U.S. Supreme Court decision that genetically engineered (modified) bacteria were patentable because they did not occur naturally in nature; and that, "A live, human-made microorganism is patentable subject matter. Respondent's microorganism constitutes a "manufacture" or "composition of matter" within that statute."

For this reason, the Court believed that as long as the organism is truly "man-made," such as through genetic engineering, then it is patentable. Since the DNA of Chakrabarty's organism was modified, it was patentable. It was also patentable if it did not occur naturally in nature.

The court stated that Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's claim is not to a thus far unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter.

Source:

1. Diamond, Commissioner of Patents and Trademarks v. Chakrabarty, United States Supreme Court, 16 June 1980, Legal Protection of Digital Information, Chapter 5, Section I.E. (Chakrabarty's Bacteria).

2. http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=447&invol=303

3. Patenting Micro-organisms, LEXORBIS Intellectual Property Practice, 30 April 2005.

4. http://www.nature.com/nbt/journal/v24/n3/full/nbt0306-317.html

5. Patenting in Biotechnology, European Federation of Biotechnology, Second Edition, September 1996, by J. Durant & D. J. Bennett

Intellectual Property Rights & Biodiversity

(Ethics, Legislations and the Indian Scenario)

Intellectual Property Rights are meant to be rights to ideas and information, which are used in new inventions or processes. These rights enable the holder to keep imitators at bay from marketing such inventions or processes for a specified time. But to be able to do that, the holder has to first disclose the formula or idea behind the product or the process. In short, IPRs are a monopoly over exploitation of an idea/information commercially, for a limited period of time. The purpose of IPRs is to stimulate innovation by offering higher monetary returns than the market otherwise might provide. While IPRs such as copyrights, patents, and trademarks go way back, the extension of IPRs to living beings and knowledge/technologies related to them is relatively recent. In 1930, the U.S. Plant Patent Act was passed after which in 1961, an International Convention for the Protection of New Varieties of Plants, was signed leading to the treaty coming into force in