Today in 1980: The Supreme Court allows the first patent of a genetically-modified organism

June 16, 2016

Today in Legal HistoryThe use of genetically-modified organisms (GMOs) in food has become a hot topic of debate in recent years, spurred in large part by the increased presence of GMOs in food over the past three decades.  This increase is unquestionably related to the substantial growth experienced by biotechnology companies that develop and produce GMOs.

The growth of biotech companies over the past three decades is arguably attributable to the ability of these companies to obtain patents for the GMOs that they develop.  And that ability is a direct result of a Supreme Court decision that is celebrating its 36th anniversary today: Diamond v. Chakrabarty.

Chakrabarty is one of the single most significant cases in intellectual property law.  It marked the first time that the Supreme Court allowed the patenting of a genetically-altered living organism.  Previously, the generally accepted view was that life was not patentable.

The case begins with the development, through genetic engineering, by Ananda Chakrabarty of a strain of bacteria capable of breaking down multiple components of crude oil.  Chakrabarty filed a patent application, assigned to the General Electric Co., for 36 claims relating to the creation of the bacteria.  There were three different types of claims in the application: “first, process claims for the method of producing the bacteria; 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.”

While allowing the first two categories of claims, the patent examiner rejected the third on the grounds that micro-organisms are “products of nature” and such products of nature, as living things, are not patentable subject matter.

Chakrabarty appealed to the Patent Office Board of Appeals, and the board affirmed.  After some additional procedural maneuverings, the case landed on the Supreme Court’s docket.

According to the majority opinion, the question before the Court in the case was whether Chakrabarty’s micro-organism constituted patentable subject matter under the Patent Act of 1952, which limits such subject matter to “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

In a 5-to-4 decision, the Court resolved this question in the affirmative, finding that the bacterium “plainly qualifies as patentable subject matter” as “a nonnaturally occurring manufacture or composition of matter.”  Of course, the far more memorable distillation of the holding of Chakrabarty  is that “anything under the sun that is made by man” may be patentable.

Chakrabarty was able to obtain the patent on his bacterium in March of 1981.  But while micro-organisms were eligible for patent protection after the Court’s ruling, it wasn’t until April of 1988 that the U.S. Patent and Trademark Office (USPTO) announced that it “now considers non-naturally occurring non-human multicellular living organisms, including animals, to be patentable subject matter,” a change in position that the USPTO directly attributes to Chakrabarty.

And as mentioned above, the entire biotech industry owes its existence and continued profitability to the ability to patent living matter.  In short, Chakrabarty is responsible for the widespread development, production, and use of GMOs.