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." Respondent filed a patent application
relating to his invention of a human-made, genetically engineered
bacterium capable of breaking down crude oil, a property which is
possessed by no naturally occurring bacteria. A patent examiner's
rejection of the patent application's claims for the new bacteria
was affirmed by the Patent Office Board of Appeals on the ground
that living things are not patentable subject matter under § 101.
The Court of Customs and Patent Appeals reversed, concluding that
the fact that micro-organisms are alive is without legal
significance for purposes of the patent law.
Held: A live, human-made micro-organism is patentable
subject matter under § 101. Respondent's micro-organism constitutes
a "manufacture" or "composition of matter" within that statute. Pp.
447 U. S.
308-318.
(a) In choosing such expansive terms as "manufacture" and
"composition of matter," modified by the comprehensive "any,"
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
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."
Hartranft v. Wiegmann, 121 U. S. 609,
121 U. S. 615.
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.
S. 127, distinguished. Pp.
447 U. S.
308-310.
(b) The passage of the 1930 Plant Patent Act, which afforded
patent protection to certain asexually reproduced plants, and the
1970 Plant Variety Protection Act, which authorized protection for
certain sexually reproduced plants but excluded bacteria from its
protection, does not evidence congressional understanding that the
terms "manufacture" or "composition of matter" in § 101 do not
include living things. Pp.
447 U. S. 310-314.
Page 447 U. S. 304
(c) Nor does the fact that genetic technology was unforeseen
when Congress enacted § 101 require the conclusion that
micro-organisms cannot qualify as patentable subject matter until
Congress expressly authorizes such protection. The unambiguous
language of § 101 fairly embraces respondent's invention. Arguments
against patentability under § 101, based on potential hazards that
may be generated by genetic research, should be addressed to the
Congress and the Executive, not to the Judiciary. Pp.
447 U. S.
314-318.
596 F.2d 952, affirmed.
BURGER, C J., delivered the opinion of the Court, in which
STEWART, BLACKMUN, REHNQUIST, and STEVENS, JJ., joined. BRENNAN,
J., filed a dissenting opinion, in which WHITE, MARSHALL, and
POWELL, JJ., joined,
post, p.
447 U. S.
318.
Page 447 U. S. 305
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 Co. The
application asserted 36 claims related to Chakrabarty's invention
of
"a bacterium from the genus Pseudomons containing therein at
least two stable energy-generating plasmids, each of said plasmids
providing a separate hydrocarbon degradative pathway. [
Footnote 1]"
This human-made, 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. [
Footnote 2]
Chakrabarty's patent claims were of three types: first, process
claims for the method of producing the bacteria;
Page 447 U. S. 306
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. [
Footnote 3]
Relying on the legislative history of the 1930 Plant 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, 1038 (1977), which held that "the fact
that micro-organisms . . . are alive . . . [is] without legal
significance" for purposes of the patent law. [
Footnote 4] Subsequently, we granted the Acting
Commissioner of Patents and Trademarks' petition for certiorari in
Bergy, vacated the judgment, and remanded the case "for
further consideration in light of
Parker v. Flook,
437 U. S. 584
(1978)." 438 U.S. 902 (1978). The Court of Customs and Patent
Appeals then vacated its judgment in
Chakrabarty and
consolidated the case with
Bergy for reconsideration.
After reexamining both cases in the light of our holding in
Flook, that court, with one dissent, reaffirmed its
earlier judgments. 596 F.2d 952 (1979).
Page 447 U. S. 307
The Commissioner of Patents and Trademarks again sought
certiorari, and we granted the writ as to both Bergy and
Chakrabarty. 444 U.S. 924 (1979). Since then,
Bergy has
been dismissed as moot, 444 U.S. 1028 (1980), leaving only
Chakrabarty for decision.
II
The Constitution grants Congress broad power to legislate to
"promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries."
Art. I, § 8, cl. 8. The patent laws promote this progress by
offering inventors exclusive rights for a limited period as an
incentive for their inventiveness and research efforts.
Kewanee
Oil Co. v. Bicron Corp., 416 U. S. 470,
416 U. S.
480-481 (1974);
Universal Oil Co. v. Globe Co.,
322 U. S. 471,
322 U. S. 484
(1944). The authority of Congress is exercised in the hope that
"[t]he productive effort thereby fostered will have a positive
effect on society through the introduction of new products and
processes of manufacture into the economy, and the emanations by
way of increased employment and better lives for our citizens."
Kewanee, supra, at
416 U. S.
480.
The question before us in this case is a narrow one of statutory
interpretation requiring us to construe 35 U.S.C. § 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."
Specifically, we must determine whether respondent's
micro-organism constitutes a "manufacture" or "composition of
matter" within the meaning of the statute. [
Footnote 5]
Page 447 U. S. 308
III
In cases of statutory construction we begin, of course, with the
language of the statute.
Southeastern Community College v.
Davis, 442 U. S. 397,
442 U. S. 405
(1979). And "unless otherwise defined, words will be interpreted as
taking their ordinary, contemporary, common meaning."
Perrin v.
United States, 444 U. S. 37,
444 U. S. 42
(1979). We have also cautioned that courts "should not read into
the patent laws limitations and conditions which the legislature
has not expressed."
United States v. Dubilier Condenser
Corp., 289 U. S. 178,
289 U. S. 199
(1933) .
Guided by these 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 or prepared
materials by giving to these materials new forms, qualities,
properties, or combinations, whether by hand labor or by
machinery."
American Fruit Growers, Inc. v. Brogdex Co.,
283 U. S. 1,
283 U. S. 11
(1931). 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."
Shell Development Co. v. Watson, 149 F.
Supp. 279, 280 (DC 1957) (citing 1 A. Deller, Walker on Patents
§ 14, p. 55 (1st ed.1937)). 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]." Act of Feb. 21, 1793, § 1, 1 Stat.
319. The Act embodied Jefferson's philosophy that "ingenuity should
receive a liberal encouragement."
Page 447 U. S. 309
5 Writings of Thomas Jefferson 75-76 (Washington ed. 1871).
See Graham v. John Deere Co., 383 U. S.
1,
383 U. S. 7-10
(1966). Subsequent patent statutes in 1836, 1870, and 1874 employed
this same broad language. In 1052, 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." S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952);
H.R.Rep. No. 1979, 82d Cong., 2d Sess., 6 (1952). [
Footnote 6]
This is not to suggest that § 101 has no limits, or that it
embraces every discovery. The laws of nature, physical phenomena,
and abstract ideas have been held not patentable.
See Parker v.
Flook, 437 U. S. 584
(1978);
Gottschalk v. Benson, 409 U. S.
63,
409 U. S. 67
(1972);
Funk Brothers Seed Co. v. Kalo Inoculant Co.,
333 U. S. 127,
333 U. S. 130
(1948);
O'Reilly v.
Morse, 15 How. 62,
56 U. S. 112-121
(1854);
Le Roy v.
Tatham, 14 How. 156,
55 U. S. 175
(1853). 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."
Funk, supra at
333 U. S.
130.
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]
Page 447 U. S. 310
use."
Hartranft v. Wiegmann, 121 U.
S. 609,
121 U. S. 615
(1887). 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 nonpatentable:
"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
species produces no new bacteria, no change in the six species of
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 ends nature
originally provided, and act quite independently of any effort of
the patentee."
333 U.S. at
333 U. S. 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 petitioner'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
Page 447 U. S. 311
Variety Protection Act, which authorized protection for certain
sexually reproduced plants but excluded bacteria from its
protection. [
Footnote 7] In the
petitioner'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 petitioner 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 Dec.Com.Pat 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 forest and the plants of the
earth, which of course would be unreasonable and impossible."
Id. at 126. 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. Thorne,
Relation of Patent Law to Natural Products, 6 J.Pat.Off.Soc. 23,
24
Page 447 U. S. 312
(1923). [
Footnote 8] 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.
See 35 U.S.C. § 112.
Because new plants may differ from old only in color or perfume,
differentiation by written description was often impossible.
See Hearings on H.R. 11372 before the House Committee on
Patents, 71st Cong., 2d Sess., 7 (1930) (memorandum of Patent
Commissioner Robertson).
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.
S.Rep. No. 315, 71st Cong., 2d Sess., 8 (1930); H.R.Rep. No. 1129,
71st Cong., 2d Sess., 7-9 (1930). And it relaxed the written
description requirement in favor of "a description . . . as
complete as is reasonably possible." 35 U.S.C. § 162. No Committee
or Member of Congress, however, expressed the broader view, now
urged by the petitioner, 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."
See S.Rep. No. 315,
supra at Appendix A; H.R.Rep. No. 1129,
supra at
Appendix A. 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
Page 447 U. S. 313
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. . . ."
S.Rep. No. 315,
supra at 6; H.R.Rep. No. 1129,
supra at 7 (emphasis added). 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. Brief for Petitioner 27, n. 31. 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 petitioner's position.
See n 7,
supra. The legislative history gives no reason for this
exclusion. As the Court of Customs and
Page 447 U. S. 314
Patent Appeals suggested, it may simply reflect congressional
agreement with the result reached by that court in deciding
In
re Arzberger, 27 C.C.P.A.(Pat.) 1315, 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.
[
Footnote 9] In any event,
absent some clear indication that Congress "focused on [the] issues
. . . directly related to the one presently before the Court,"
SEC v. Sloan, 436 U. S. 103,
436 U. S.
120-121 (1978), there is no basis for reading into its
actions an intent to modify the plain meaning of the words found in
§ 101.
See TVA v. Hill, 437 U. S. 153,
437 U. S.
189-193 (1978);
United States v. Price,
361 U. S. 304,
361 U. S. 313
(1960).
(B)
The petitioner's second argument is that micro-organisms cannot
qualify as patentable subject matter until Congress expressly
authorizes such protection. His 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 petitioner 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 petitioner 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
Page 447 U. S. 315
patent rights into areas wholly unforeseen by Congress."
Id. at
437 U. S.
596.
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."
Marbury v.
Madison, 1 Cranch 137,
5 U. S. 177
(1803). 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." 437 U.S. at
437 U. S. 595,
n. 18. 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." Id. at 437 U. S. 593.
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."
Barr v. United
States, 324 U. S. 83,
324 U. S. 90
(1945).
Accord, Browder v. United States, 312 U.
S. 335,
312 U. S. 339
(1941);
Puerto Rico v. Shell
Co.,
Page 447 U. S. 316
302 U. S. 253,
302 U. S. 257
(1937). 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.
See Graham v. John Deere Co.,
383 U.S. at
383 U. S. 12-17.
Mr. Justice Douglas reminded that the inventions most benefiting
mankind are those that "push back the frontiers of chemistry.
physics, and the like."
Great A. & P. Tea Co. v.
Supermarket Corp., 340 U. S. 147,
340 U. S. 154
(1950) (concurring opinion). Congress employed broad general
language in drafting § 101 precisely because such inventions are
often unforeseeable. [
Footnote
10]
To buttress his argument, the petitioner, 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 them 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
Page 447 U. S. 317
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. [
Footnote 11]
Page 447 U. S. 318
We have emphasized in the recent past that
"[o]ur individual appraisal of the wisdom or unwisdom of a
particular [legislative] course . . . is to be put aside in the
process of interpreting a statute."
TVA v. Hill, 437 U.S. at
437 U. S. 194.
Our task, rather, is the narrow one of determining what Congress
meant by the words it used in the statute; once that is done, our
powers are exhausted. Congress is free to amend § 101 so as to
exclude from patent protection organisms produced by genetic
engineering.
Cf. 42 U.S.C. § 2181(a), exempting from
patent protection inventions "useful solely in the utilization of
special nuclear material or atomic energy in an atomic weapon." Or
it may choose to craft a statute specifically designed for such
living things. But, until Congress takes such action, this Court
must construe the language of § 101 as it is. The language of that
section fairly embraces respondent's invention.
Accordingly, the judgment of the Court of Customs and Patent
Appeals is
Affirmed.
[
Footnote 1]
Plasmids are hereditary units physically separate from the
chromosomes of the cell. In prior research, Chakrabarty and an
associate discovered that plasmids control the oil degradation
abilities of certain bacteria. In particular, the two researchers
discovered plasmids capable of degrading camphor and octane, two
components of crude oil. In the work represented by the patent
application at issue here, Chakrabarty discovered a process by
which four different plasmids, capable of degrading four different
oil components, could be transferred to and maintained stably in a
single Pseudomonas bacterium, which itself has no capacity for
degrading oil.
[
Footnote 2]
At present, biological control of oil spills requires the use of
a mixture of naturally occurring bacteria, each capable of
degrading one component of the oil complex. In this way, oil is
decomposed into simpler substances which can serve as food for
aquatic life. However, for various reasons, only a portion of any
such mixed culture survives to attack the oil spill. By breaking
down multiple components of oil, Chakrabarty's microorganism
promises more efficient and rapid oil-spill control.
[
Footnote 3]
The Board concluded that the new bacteria were not "products of
nature," because Pseudomonas bacteria containing two or more
different energy-generating plasmids are not naturally
occurring.
[
Footnote 4]
Bergy involved a patent application for a pure culture
of the microorganism
Streptomuces vellosus found to be
useful in the production of lincomycin, an antibiotic.
[
Footnote 5]
This case does not involve the other "conditions and
requirements" of the patent laws, such as novelty and
nonobviousness. 35 U.S.C. §§ 102, 103.
[
Footnote 6]
This same language was employed by P. J. Federico, a principal
draftsman of the 1952 recodification, in his testimony regarding
that legislation:
"[U]nder section 101, a person may have invented a machine or a
manufacture, which may include anything under the sun that is made
by man. . . ."
Hearings on H.R. 3760 before Subcommittee No. 3 of the House
Committee on the Judiciary, 82d Cong., 1st Sess., 37 (1951).
[
Footnote 7]
The Plant Patent Act of 1930, 35 U.S.C. § 161, provides in
relevant part:
"Whoever invents or discovers and asexually reproduces any
distinct and new variety of plant, including cultivated sports,
mutants, hybrids, and newly found seedlings, other than a tuber
propagated plant or a plant found in an uncultivated state, may
obtain a patent therefor. . . ."
The Plant Variety Protection Act of 1970, provides in relevant
part:
"The breeder of any novel variety of sexually reproduced plant
(other than fungi, bacteria, or first generation hybrids) who has
so reproduced the variety, or his successor in interest, shall be
entitled to plant variety protection therefor. . . ."
84 Stat. 1547, 7 U.S.C. § 2402(a).
See generally 3 A.
Deller, Walker on Patents, ch. IX (2d ed.1964); R. Allyn, The First
Plant Patents (1934).
[
Footnote 8]
Writing three years after the passage of the 1930 Act, R. Cook,
Editor of the Journal of Heredity, commented:
"It is a little hard for plant men to understand why [Art. I, §
8] of the Constitution should not have been earlier construed to
include the promotion of the art of plant breeding. The reason for
this is probably to be found in the principle that natural products
are not patentable."
Florists Exchange and Horticultural Trade World, July 15, 1933,
p. 9.
[
Footnote 9]
In 1873, the Patent Office granted Louis Pasteur a patent on
"yeast, free from organic germs of disease, as an article of
manufacture." And in 1967 and 1968, immediately prior to the
passage of the Plant Variety Protection Act, that Office granted
two patents which, as the petitioner concedes, state claims for
living micro-organisms.
See Reply Brief for Petitioner 3,
and n. 2.
[
Footnote 10]
Even an abbreviated list of patented inventions underscores the
point: telegraph (Morse, No. 1,647); telephone (Bell, No. 174,465);
electric lamp (Edison, No. 223,898); airplane (the Wrights, No.
821,393); transistor (Bardeen & Brattain, No. 2,524,035);
neutronic reactor (Fermi & Szilard, No. 2,708,656); laser
(Schawlow & Townes, No. 2,929,922).
See generally
Revolutionary Ideas, Patents & Progress in America, United
States Patent and Trademark Office (1976).
[
Footnote 11]
We are not to be understood as suggesting that the political
branches have been laggard in the consideration of the problems
related to genetic research and technology. They have already taken
action. In 1976, for example, the National Institutes of Health
released guidelines for NIH-sponsored genetic research which
established conditions under which such research could be
performed. 41 Fed.Reg. 27902. In 1978, those guidelines were
revised and relaxed. 43 Fed.Reg. 60080, 60108, 60134. And
Committees of the Congress have held extensive hearings on these
matters.
See, e.g., Hearings on Genetic Engineering before
the Subcommittee on Health of the Senate Committee on Labor and
Public Welfare, 94th Cong., 1st Sess. (1975); Hearings before the
Subcommittee on Science, Technology, and Space of the Senate
Committee on Commerce, Science, and Transportation, 95th Cong., 1st
Sess. (1977); Hearings on H.R. 4759
et al. before the
Subcommittee on Health and the Environment of the House Committee
on Interstate and Foreign Commerce, 95th Cong., 1st Sess.
(1977).
MR. JUSTICE BRENNAN, with whom MR. JUSTICE WHITE, MR. JUSTICE
MARSHALL, and MR. JUSTICE POWELL join, dissenting.
I agree with the Court that the question before us is a narrow
one. Neither the future of scientific research, nor even the
ability of respondent Chakrabarty to reap some monopoly profits
from his pioneering work, is at stake. Patents on the processes by
which he has produced and employed the new living organism are not
contested. The only question we need decide is whether Congress,
exercising its authority under Art. I, § 8, of the Constitution,
intended that he be able to secure a monopoly on the living
organism itself, no matter how produced or how used. Because I
believe the Court has misread the applicable legislation, I
dissent.
Page 447 U. S. 319
The patent laws attempt to reconcile this Nation's deep-seated
antipathy to monopolies with the need to encourage progress.
Deepsouth Packing Co. v. Laitram Corp., 406 U.
S. 518,
406 U. S.
530-531 (1972);
Graham v. John Deere Co.,
383 U. S. 1,
383 U. S. 7-10
(1966). Given the complexity and legislative nature of this
delicate task, we must be careful to extend patent protection no
further than Congress has provided. In particular, were there an
absence of legislative direction, the courts should leave to
Congress the decisions whether and how far to extend the patent
privilege into areas where the common understanding has been that
patents are not available. [
Footnote
2/1]
Cf. Deepsouth Packing Co. v. Laitram Corp.,
supra.
In this case, however, we do not confront a complete legislative
vacuum. The sweeping language of the Patent Act of 1793, as
reenacted in 1952, is not the last pronouncement Congress has 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."
Ante at
447
U.S. 316. 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. [
Footnote 2/2]
Page 447 U. S. 320
First, the Acts evidence Congress' understanding, at least since
1930, that § 101 does not include living organisms. If newly
developed living organisms not naturally occurring had been
patentable under § 101, the plants included in the scope of the
1930 and 1970 Acts could have been patented without new
legislation. Those plants, like the bacteria involved in this case,
were new varieties not naturally occurring. [
Footnote 2/3] Although the Court,
ante at
447 U. S. 311,
rejects this line of argument, it does not explain why the Acts
were necessary unless to correct a preexisting situation. [
Footnote 2/4] I cannot share the Court's
implicit assumption that Congress was engaged in either idle
exercises or mere correction of the public record when it enacted
the 1930 and 1970 Acts. And Congress certainly thought it was doing
something significant. The Committee Reports contain expansive
prose about the previously unavailable benefits to be derived from
extending patent protection to plants. [
Footnote 2/5] H.R.Rep.
Page 447 U. S. 321
No. 91-1605, pp. 1-3 (1970); S.Rep. No. 315, 71st Cong., 2d
Sess., 1-3 (1930). Because Congress thought it had to legislate in
order to make agricultural "human-made inventions" patentable, and
because the legislation Congress enacted is limited, it follows
that Congress never meant to make items outside the scope of the
legislation patentable.
Second, the 1970 Act clearly indicates that Congress has
included bacteria within the focus of its legislative concern, but
not within the scope of patent protection. Congress specifically
excluded bacteria from the coverage of the 1970 Act. 7 U.S.C. §
2402(a). The Court's attempts to supply explanations for this
explicit exclusion ring hollow. It is true that there is no mention
in the legislative history of the exclusion, but that does not give
us license to invent reasons. The fact is that Congress, assuming
that animate objects as to which it had not specifically legislated
could not be patented, excluded bacteria from the set of patentable
organisms.
The Court protests that its holding today is dictated by the
broad language of § 101, which cannot "be confined to the
particular application[s] . . . contemplated by the
legislators.'" Ante at 447 U. S. 315,
quoting Barr v. United States, 324 U. S.
83, 324 U. S. 90
(1945). But as I have shown, the Court's decision does not follow
the unavoidable implications of the statute. Rather, it extends the
patent system to cover living material
Page 447 U. S. 322
even though Congress plainly has legislated in the belief that §
101 does not encompass living organisms. It is the role of
Congress, not this Court, to broaden or narrow the reach of the
patent laws. This is especially true where, as here, the
composition sought to be patented uniquely implicates matters of
public concern.
[
Footnote 2/1]
I read the Court to admit that the popular conception, even
among advocates of agricultural patents, was that living organisms
were unpatentable.
See ante at
447 U. S.
311-312, and n. 8.
[
Footnote 2/2]
But even if I agreed with the Court that the 1930 and 1970 Acts
were not dispositive, I would dissent. This case presents even more
cogent reasons than
Deepsouth Packing Co. not to extend
the patent monopoly in the face of uncertainty. At the very least,
these Acts are signs of legislative attention to the problems of
patenting living organisms, but they give no affirmative indication
of congressional intent that bacteria be patentable. The caveat of
Parker v. Flook, 437 U. S. 584,
437 U. S. 596
(1978), an admonition to "proceed cautiously when we are asked to
extend patent rights into areas wholly unforeseen by Congress,"
therefore becomes pertinent. I should think the necessity for
caution is that much greater when we are asked to extend patent
rights into areas Congress has foreseen and considered, but has not
resolved.
[
Footnote 2/3]
The Court refers to the logic employed by Congress in choosing
not to perpetuate the "dichotomy" suggested by Secretary Hyde.
Ante at
447 U. S. 313.
But by this logic, the bacteria at issue here are distinguishable
from a "mineral . . . created wholly by nature" in exactly the same
way as were the new varieties of plants. If a new Act was needed to
provide patent protection for the plants, it was equally necessary
for bacteria. Yet Congress provided for patents on plants, but not
on these bacteria. In short, Congress decided to make only a subset
of animate "human-made inventions,"
ibid., patentable.
[
Footnote 2/4]
If the 1930 Act's only purpose were to solve the technical
problem of description referred to by the Court,
ante at
447 U. S. 312,
most of the Act, and in particular its limitation to asexually
reproduced plants, would have been totally unnecessary.
[
Footnote 2/5]
Secretary Hyde's letter was not the only explicit indication in
the legislative history of these Acts that Congress was acting on
the assumption that legislation was necessary to make living
organisms patentable. The Senate Judiciary Committee Report on the
1970 Act states the Committee's understanding that patent
protection extended no further than the explicit provisions of
these Acts:
"Under the patent law, patent protection is limited to those
varieties of plants which reproduce asexually, that is, by such
methods as grafting or budding. No protection is available to those
varieties of plants which reproduce sexually, that is, generally by
seeds."
S.Rep. No. 91-1246, p. 3 (1970). Similarly, Representative
Poage, speaking for the 1970 Act, after noting the protection
accorded asexually developed plants, stated that, "for plants
produced from seed, there has been no such protection." 116
Cong.Rec. 40295 (1970).