Patenting Life, Part 1: Should Living Things Be Patented?

On January 28, 1969, a blowout occurred on an oil platform off the coast of Santa Barbara, California. Crude oil poured into the water and soon onto the beaches. The spill killed seabirds, fish, and mammals such seals and dolphins. It inflicted millions of dollars of damage on property, tourism, and the fishing industry.

One person interested in the oil spill was Ananda Mohan Chakrabarty, an immigrant from India. He was working as a microbiologist for General Electric in New York. The Santa Barbara oil spill made international news. Today, it still ranks as the third largest U.S. oil spill. (The other two were the Exxon Valdez spill off Alaska and the Deepwater Horizon in the Gulf of Mexico.)

A few years after the spill, Chakrabarty invented a new kind of bacteria. He added plasmids (small pieces of DNA) from other bacteria to create multiplasmid bacteria. They grew faster and better on crude oil than other bacteria. His new bacteria could help clean up oil spills because they consumed oil so quickly.

Chakrabarty applied for patents on his new bacteria. A patent prevents others from copying an invention without the inventor’s permission. The idea behind patents is to allow inventors to get credit for and to profit from their inventions. U.S. law states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter…may obtain a patent….”

Chakrabarty received patents on his process for creating the bacteria. But Chakrabarty wanted a patent on the bacterium itself. The question was: Did Chakrabarty’s bacterium qualify for a patent? The bacterium was new and useful. But was it something that could be patented? Was it a “process, machine, manufacture, or composition of matter”?

All patent applications must be submitted to the U.S. Patent and Trademark Office (USPTO). The USPTO denied Chakrabarty’s patent application. It ruled that Chakrabarty’s bacterium was a “product of nature” and no one may get a patent for living things.

The Appeal Chakrabarty appealed the USPTO’s decision. Step by step, the case made its way to the U.S. Supreme Court. The first appeal was to the Board of Patent Appeals and Interferences. It sided with the USPTO’s decision. Next was U.S. Court of Customs and Patent Appeals. It sided with Chakrabarty. Sidney A. Diamond of USPTO appealed to the Supreme Court. Thus the name of the Supreme Court case was Diamond v. Chakrabarty.

Diamond v. Chakrabarty (1980) The Supreme Court had to decide one question: Did U.S. patent law allow for a live, human-made bacterium to be patented? The law said that inventors could patent “manufacture” or “composition of matter.” Did the bacterium fit this description?

The Decision The court majority reasoned: The terms “manufacture” and “composition of matter” should be interpreted broadly. In fact, in 1952 when the Patent Act was amended, a congressional committee stated that Congress allowed people to patent “anything under the sun that is made by man.” True “products of nature” may not be patented: “Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” But Chakrabarty’s bacteria differed from any bacteria found in nature. “His discovery is not nature’s handiwork but his own, and therefore may be patented.” By a 5–4 vote, the court upheld Chakrabarty’s bacterium patent.

The biotechnology industry was taking off in the 1980s. Following the Diamond v. Chakrabarty decision, many new patents were granted on living things. The Explosion in Biotechnology One was for the Oncomouse, a white mouse injected with a gene to make it more likely to get cancer. The oncomouse was good for testing anti-cancer drugs. Many patents were also granted on human genes, the basic units of heredity.

Now it’s your turn to work together to make decisions about a patent.

Dr. Frankenstein’s Invention Imagine that Dr. Frankenstein, using metal, chemicals, and dead human and animal parts has created a monster.

Dr. Frankenstein, using metal, chemicals, and dead human and animal parts has created a monster. a. The Chakrabarty decision said that anything made by man (not by nature) can be patented. Is it legal to patent the monster? b. Should it be legal to patent the monster? Why or why not? 2. Be prepared to share your answers and reasons with the class. 1. Discuss and answer these questions:

This project is a collaborative effort of Street Law, Inc. and the Constitutional Rights Foundation. Educating to Protect Intellectual Property (ePIP) is funded by grant 2009-BE-BX-0001 from the United States Patent & Trademark Office and supported by the United States Department of Justice. Developed by Marshall Croddy, Bill Hayes, Damon Huss, Laura Wesley Written by Bill Hayes Produced by Keri Doggett With Andrew Costly

Image Credits Slide # 1, 9Pathological bacteria. iStockphoto. Humonia. File #: Platform A, off Santa Barbara. Wikipedia. Antandrus. 3Oil on Sea Water. iStockphoto. Aristotoo. File#: Chakrabarty. Wikimedia Commons. Biswarup Ganguly. File:Ananda_Mohan_Chakrabarty_-_Kolkata_ _2780.JPG 4, 6Bacterium. iStockphoto. Fatido. File #: Mad Scientist. iStockphoto. Suljo. File #: USPTO. 8, 10Supreme Court. Wikimedia Commons. 11Simple Mouse. Seans Potato Business. Wikimedia Commons. 13, 14Frankenstein’s monster. Wikimedia Commons. File:Frankenstein%27s_monster_(Boris_Karloff).jpg