Secretary Hyde`s letter was not the only explicit indication in the legislative history of these laws that Congress believed legislation was necessary to make living organisms patentable. The Senate Judiciary Committee`s report on the 1970 Act notes that patent protection did not go beyond the express provisions of those laws: one of the most important subcellular components of a cell is the chromosome. The chromosome carries the genetic material. In bacteria and archaea, the chromosome is a circular strand of DNA. In humans and other higher forms of organisms, it is a strand, linear thread-like DNA. There are also other health and safety regulations that cover certain microorganisms: secondly, claims on an inoculum, which consists of a load-bearing material floating on water such as straw and new bacteria; and third, claims about the bacteria themselves. The patent examiner accepted the claims, which fell into the first two categories, but rejected the claims for the bacteria. Its decision was based on two grounds: (1) that microorganisms are “products of nature” and (2) that as living things, they are not patentable under 35 U.S.C. § 101. The petitioner`s second argument is that microorganisms cannot be considered patentable subject matter until Congress has expressly authorized such protection. His position is based on the fact that genetic engineering was unforeseen when Congress signed Section 101 into law. He argues that the decision on the patentability of inventions such as that of the defendant should be left to Congress. The applicant submits that the legislative process is best placed to weigh competing economic, social and scientific considerations against whether living organisms produced by genetic engineering should benefit from patent protection.
In support of this position, the applicant refers to our recent decision in Parker v. Flook, 437 U.P. 584 (1978), and the statement that the judiciary “must proceed with caution when. First, the laws prove Congress` understanding, at least since 1930, that Section 101 does not include living organisms. If newly developed living organisms that do not occur naturally had been patentable under Article 101, plants falling within the scope of the 1930 and 1970 Acts could have been patented without new legislation. These plants, like the bacteria involved in this case, were new varieties that do not occur naturally. [Footnote 2/3] Although the Court, ante, 447 U., at p. 311, rejects this reasoning, it does not explain why the laws were necessary, unless they were intended to correct a pre-existing situation.
[Footnote 2/4] I cannot share the Court`s implicit assumption that Congress conducted either unnecessary exercises or mere corrections to the public record when it enacted the 1930 and 1970 acts. And Congress certainly thought he was doing something important. The Committee`s reports contain many proses on the hitherto non-existent benefits of extending patent protection to plants. [Footnote 2/5] H.R.Rep. A diagram called an evolutionary tree (also known as the tree of life) can be a useful tool in the study of phylogenetic relationships. The way the organisms diverged from one form to another is represented by the branches of the tree. And so the common ancestry between organisms can be traced and identified. Tracking the evolutionary course of all living things would lead to LUCA. However, not all scientists support this theory.
For example, Jean-Baptiste Lamarck refuted this theory. He believed that life is born not just from one, but from many. (No. 4) Burger recognized that patents cannot protect the laws of nature or physical phenomena, but considered that a broad interpretation of 35 U.S.C. § 101, and in particular the term “manufacture,” was appropriate. He found that the word “manufacture” should have the same broad meaning as in an ordinary dictionary. Burger also argued that the Plant Patents Act of 1930 did not require interpretation on the part of the examiner, since the purpose of the Act was to separate natural products from products of human ingenuity. The bacterium was a product of Chakrabarty`s ingenuity because it did not occur in nature. Burger also rejected the theory that explicit congressional approval would be required to allow patent protection for microorganisms, as Congress could not have foreseen this scientific evolution when drafting the original patent laws.
Patents, according to Burger, are meant to reward ingenuity and invention, so it would undermine policies that help them deny protection to unexpected inventions. Organisms go through phases of life. The offspring will grow, that is, the phase in which they can also reproduce. At the cellular level, growth leads to an increase in size or number. An increase in cell size is an increase in the reach of the cell as it synthesizes and stores biomolecules. An increase in the number leads to an increase in the number of cells due to cell division. I read the Court admit that the popular opinion, even among proponents of agricultural patents, was that living organisms were not patentable. See ante, 447 U., pp. 311-312 and point 8.
Patentable subject matter under § 101. We disagree. The granting or refusal of patents on microorganisms is not likely to put an end to genetic research and the associated risks. The vast amount of research that has already taken place when no researcher knew for sure that patent protection would be available suggests that the legislative or judicial decision regarding patentability will not deter the scientific mind from exploring the unknown, any more than Knut could control the tides. The patentability of the defendant`s claims may determine whether search efforts are accelerated by the hope of a reward or slowed down by a lack of incentives, but that`s it. Brennan argued for a narrower interpretation of the topic, limiting it to the question of whether a living organism can be patentable as a bacterium, rather than whether unforeseen inventions can be patentable. He agreed with the patent examiner that the Plant Patents Act of 1930 prohibited patent protection for living organisms, which he considered essential to the purpose of Congress in drafting the Act. Brennan also referred to a 1970 law that explicitly excluded bacteria from patent protection. There are many ways to classify organisms. Check it out below.
Title 35 U.S.C. Section 101 provides for the grant of a patent to a person who invents or discovers a new and useful “production” or “composition of matter”. The respondent applied for a patent for its invention of a genetically modified artificial bacterium capable of degrading oil, a property that no natural bacterium possesses. The rejection of the patent application claims for the novel bacterium by a patent examiner was confirmed by the Board of Appeal of the Patent Office on the grounds that living beings were not patentable under Article 101. The Customs and Patent Court of Appeal overturned this decision, concluding that the fact that the microorganisms are alive has no legal significance for patent law purposes. VAT v. Hill, 437 U.S. to 437 U.S. 194. Rather, our job is to determine what Congress meant by the language it used in the Statute; Once this is done, our forces are exhausted. Congress is free to amend Section 101 to exclude genetically modified organisms from patent protection. See 42 U.S.C.
§ 2181 (a), which excludes from patentability inventions “which are exclusively useful for the use of special nuclear material or atomic energy in a nuclear weapon.” Or he may choose to develop a statute specifically designed for these living beings. But until Congress takes such a step, this court must interpret the wording of Section 101 as it stands. The wording of this section adequately covers the respondent`s invention. But even if I were to agree with the Tribunal that the 1930 and 1970 Acts are not determinative, I would not agree. This case provides even more compelling reasons than Deepsouth Packing Co. for not extending the patent monopoly in the face of uncertainty. At the very least, these laws are signs of legislative attention to problems with patenting living organisms, but they do not give a positive indication of Congress` intention to make bacteria patentable. Parker Reservation v. Flook, 437 U.
pp. 584, 437 U. S. 596 (1978), an exhortation to “proceed with caution when asked to extend patent rights to areas totally unforeseen by Congress,” thus becomes relevant. I think caution is all the greater when we are asked to extend patent rights to areas that Congress has anticipated and considered, but not resolved. The Customs and Patent Court of Appeal, by a split vote, overturned the authority of its earlier decision in In re Bergy, 563 F.2d 1031, 1038 (1977), which stated that “the fact that microorganisms. are alive. [is] devoid of legal significance” within the meaning of patent law. [Footnote 4] We then granted the Acting Commissioner of Patents and Trademarks` request regarding Certiorari in Bergy, set aside the judgment and remitted the case “for further examination in light of Parker v. Flook, 437 U. p.
584 (1978).” 438 U.S. 902 (1978).