Diamond, Commissioner of Patents and Trademarks v. Chakrabarty
United States Supreme Court
June 16, 1980
447 U.S. 303, 206 USPQ 193
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 .
In 1972, respondent Chakrabarty, a microbiologist, filed a patent application, assigned to the General Electric Company. The application asserted 36 claims related to Chakrabarty’s invention of “a bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.”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.2
Chakrabarty’s patent claims were of three types: first, process claims for the method of producing the bacteria;<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 <206 USPQ 196> 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.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 microorganisms.
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, 195 USPQ 344 (1977), which held that “the fact that microorganisms * * * are alive * * * [is] without legal significance” for purposes of the patent law.4 Subsequently, we granted the Government’s 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, 198 USPQ 193 .” 438 U.S. 902, 198 USPQ 257 (1978). The Court of Customs and Patent Appeals then vacated its judgment in Chakrabarty and consolidated the case with Bergy for reconsideration. After re-examining both cases in the light of our holding in Flook, that court, with one dissent, reaffirmed its earlier judgments. 596 F.2d 952, 201 USPQ 352 (1979).
<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, 204 USPQ 608 (1979). Since then, Bergy has been dismissed as moot, 444 U.S. 1028 (1980), leaving only Chakrabarty for decision.
The Constitution grants Congress broad power to legislate to “promote the Progress of Science and the useful Arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Art. I, §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, 480-481, 181 USPQ 673, 678 (1974); Universal Oil Co. v. Globe Co.,322 U.S. 471, 484, 61 USPQ 382, 388 (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 480, 181 USPQ at 678 .
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 microorganism constitutes a “manufacture” or “composition of matter” within the meaning of the statute.5 <447 U.S. 308>
In cases of statutory construction we begin, of course, with the language of the statute. Southeastern Community College v. Davis,442 U.S. 397, 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, 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, 199, 17 USPQ 154, 162 (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 materials prepared by giving to these <206 USPQ 197> 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, 11, 8 USPQ 131, 133 (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 Dev. Co. v. Watson, 149 F.Supp.279, 280, 113 USPQ 265, 266 (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, ch.11, §1, 1 Stat. 318. The Act embodied Jefferson’s philosophy that “ingenuity should receive a liberal encouragement.” <447 U.S. 309> 5 Writings of Thomas Jefferson, at 75-76. See Graham v. John Deere Co.,383 U.S. 1, 7-10, 148 USPQ 459, 462-464 (1966). Subsequent patent statutes in 1836, 1870 and 1874 employed this same broad language. In 1952, 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. 1923, 82d Cong., 2d Sess., 6 (1952).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, 198 USPQ 193 (1978);Gottschalk v. Benson, 409 U.S. 63, 67, 175 USPQ 673, 674-675 (1973); Funk Seed Co. v. Kalo Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948);O’Reilly v. Morse, 15 How. 61, 112-121 (1853);Le Roy v. Tatham,14 How. 155, 175 (1852). 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 130, 76 USPQ at 281 .
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] <447 U.S. 310> use.” Hartranft v. Wiegmann,121U.S. 609, 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 the six species produces no new bacteria, no change in the six 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 same ends nature originally provided and act quite independently of any effort by the patentee.
333 U.S.,at 127, 76 USPQ at 280 .
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. <206 USPQ 198>
Two contrary arguments are advanced, neither of which we find persuasive.
The Government’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 <447 U.S. 311> Variety Protection Act, which authorized patents for certain sexually reproduced plants but excluded bacteria from its protection.7 In the Government’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 Government 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 C. D. 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 forests and the plants of the earth, which of course would be unreasonable and impossible.” Id.,at 126 . The Latimer case, it seems, came to “set forth the general stand taken in these matters” that plants were natural products not subject to patent protection. H. Thorne, Relation of Patent Law to Natural Products, 6 J. Pat. Off. Soc. 23, 24 (1923).8<447 U.S. 312> 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, 71 Cong., 2d Sess., 4 (1930), p. 7 (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., 6-8 (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 Government, 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 <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: <206 USPQ 199>
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 microorganism 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 United States 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 Government’s position. See supra, at n.7. The legislative history gives no reason for this exclusion. As the Court of Customs and <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,112 F.2d 834, 46 USPQ 32 (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 §101.9 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, 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, 189-193 (1978); United States v. Price, 361 U.S. 304, 313 (1960).
The Government’s second argument is that microorganisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. Its 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 Government 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 Government relies on our recent holding in Parker v. Flook,437 U.S. 584, 198 USPQ 193 (1978), and the statement that the judiciary “must proceed cautiously when * * * asked to extend <447 U.S. 315> patent rights into areas wholly unforeseen by Congress.” Id.,at 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, 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 <206 USPQ 200> specific end use, is unpatentable subject matter under §101.” 437U.S., at 595, n.18, 198 USPQ at 199, 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 593, 198 USPQ at 198 . 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, 90 (1945). Accord, Browder v. United States, 312 U.S. 335, 339 (1941); Puerto Rico v. Shell Co., <447 U.S. 316> 302U.S. 253, 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. SeeGraham v. John Deere Co., 383 U.S.,at 12-17, 148 USPQ at 464 . Mr. Justice Douglas reminded that the inventions most benefiting mankind are those that “push back the frontiers of chemistry, physics, and the like.” A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 154, 87 USPQ 303, 306-307 (1950) (concurring opinion). Congress employed broad general language in drafting §101 precisely because such inventions are often unforeseeable.10
To buttress its argument, the Government, 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 <447 U.S. 317> patentable subject matter under §101. We disagree. The grant or denial of patents on microorganisms 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.11 <206 USPQ 201> <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. 153, 194 (1978). 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. Compare 42 U.S.C. §2181, 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.
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.
<447 U.S. 319> The patent laws attempt to reconcile this Nation’sdeepseated antipathy to monopolies with the need to encourage progress. Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 530-531, 173 USPQ 769, 773-774 (1972); Graham v. John Deere Co.,383 U.S. 1, 7-10, 148 USPQ 459, 462-464 (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.12 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 re-enacted 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 12, 206 USPQ at 200 .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.13
<447 U.S. 320> First, the Acts evidence Congress’ understanding, at least since 1930, that §101 does not include living organisms. If newly <206 USPQ 202> 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.14 Although the Court, ante, at 7, 206 USPQ at 198, rejects this line of argument, it does not explain why the Acts were necessary unless to correct a pre-existing situation.15 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.16 H.R. <447 U.S. 321> Rep.No. 91-1605, 91st Cong., 2d Sess., 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 patentable items outside the scope of the legislation.
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 12, 206 USPQ at 200 , quoting Barr v. United States, 324 U.S. 83, 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 <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.
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 bacteria, which itself has no capacity for degrading oil.
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 micro-organism promises more efficient and rapid oil-spill control.
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.
4 Bergy involved a patent application for a pure culture of the microorganism Streptomyces vellosus found to be useful in the production of lincomycin, an antibiotic.
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 .
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 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).
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 propogated plant or a plant found in an uncultivated state, may obtain a patent therefore. * * *
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. * * * 7 U. S. C. §2402(a).
See generally, 3 A. Deller, Walker on Patents, Chapter IX (2d ed. 1964);R. Allyn The First Plant Patents (1934).
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 [Article 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, at 9.
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 Government concedes,state claims for living microorganisms. She Reply Brief of United States, at 3, and n.2.
10 Even an abbreviated list of patented inventions underscores the point: telegraph (Morse, No. 1647); 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,Office of Patents (1976).
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. (1978); Hearings before the Subcommittee on Health and the Environment of the House Committee on Interstate and Foreign Commerce, 95th Cong., 1st Sess. (1977).
13 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, 596, 198 USPQ 193, 200 (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.
14 The Court refers to the logic employed by Congress in choosing not to perpetuate the “dichotomy” suggested by Secretary Hyde. Ante, at 9, 206 USPQ at 198 .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.
15 If the 1930 Act’s only purpose were to solve the technical problem of description referred to by the Court, ante,at 8, 206 USPQ at 198 most of the Act, and in particular its limitation to asexually reproduced plants, would have been totally unnecessary.
16 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, by seeds. S. Rep. No. 91-1246, 91st Cong., 2d Sess., 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.” 122 Cong. Rec. 40295 (1970).