In 1972, respondent Chakrabarty, a microbiologist, filed a patent application for a genetically engineered bacterium developed by him capable of breaking down multiple components of crude oil.
Due to the properties of the invention it is believed to have a significant value in the treatment of oil spills. Chakrabarty's patent claims were of three types:
Process claims for the method of producing the bacteria.
Composition of the slurry of bacteria, its carrier liquids and its application.
Claims over the bacteria itself.
The patent examiner (Sydney A.Diamond) allowed the claims falling into the first two categories but rejected the third claim for patent over the bacteria. His decision rested on two grounds:
that micro-organisms are "products of nature," and
that as living things they are not patentable subject matter under 35 U.S.C. 101.
ISSUES
Whether genetically engineered bacterium being living things are patentable subject matter under the statute?
Whether respondent's micro-organism constitutes a "manufacture" or "composition of matter" within the meaning of the statute (Under Title 35 U.S.C , Section101).
PROCEDURAL HISTORY
The patent examiner allowed the claims falling into the first two categories, but rejected the third claim for patent over the bacteria. Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals and the Board affirmed the examiner on the second ground.
The United States Court of Customs and Patent Appeals overturned the case in Chakrabarty's favour, writing that "the fact that micro-organisms are alive is without legal significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court.
LAW APPLICABLE
Title 35 U.S.C., Section 101, which provides: "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."
HELD
The Supreme Court (affirmed the decision of The United States Court of Customs and Patent Appeals) held that a live, human-made micro-organism is patentable subject matter under Section 101.
Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute.
Court has read the term "manufacture" in Section 101 in accordance with its dictionary definition to mean "the production of articles for use from raw or prepared materials 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."
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 invention is not a discovery but a result of human intervention and research.
Also, it is a non-naturally occurring manufacture or composition of matter thus making it a patentable subject matter.
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 Section 101 has no limits or that it embraces every discovery.
The laws of nature, physical phenomena, and abstract ideas have been held not patentable under the U.S.C. Respondent’s micro-organism qualifies as patentable subject matter as it is not an unknown natural phenomenon. It is a non-naturally occurring manufacture or composition of matter marked with different characteristics from any found in nature and one having the potential for significant utility. His invention is not a discovery or nature's handiwork, but a result of human ingenuity and research.