Chakrabarty filed a patent application (Appl. No.: 260,563) in 1972 related to his 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.” The human-made and genetically engineered bacterium was capable of breaking down multiple components of crude oil; as no naturally occurring bacterium possessed this property, Chakrabarty’s invention was believed to be novel and had a use in treating oil spills.
In the Chakrabarty patent application, his claims were of three types including: process claims (for the method of producing the genetically engineered bacteria), claims for an inoculum comprised of a carrier material floating on water, and claims for the human-made bacteria. The patent examiner allowed the process claims (claims #11-13 of App. No.: 260,563) and the claims related to the inoculum (claims #7-10, #14-18 in App. No.: 260,563). The examiner, however, rejected the claims pertaining to the bacterium (claims #1-6 in App. No.: 260,563). The claims pertaining to the human-made and genetically engineered bacterium were rejected based on the grounds that micro-organisms are products of nature. Also, under 35 U.S.C. 101, living things are not patetable subject material.
Chakrabarty appealed the rejection of claims #1-6 to the Patent Office Board of Appeals. The Patent Office Board of Appeals examined 35 U.S.C. 101 and the 1930 Plant Patent Act before making a decision on the case. The Plant Patent Act of 1930 extended patent protection to specific asexually reproduced plants. The Patent Office Board of Appeals, however, sided with the examiner stating that 35 U.S.C. 101 was not intended to cover living things.
Chakrabarty appealed the decision of the Patent Office Board of Appeals and the Court of Customs and Patent Appeals heard the case. The Court of Customs and Patent Appeals reversed the previous decision made by the Patent Office Board of Appeals. The Commissioner of Patents and Trademarks then sought certiorari.
The Supreme Court interpreted 35 U.S.C. 101 to allow “manufacture” and “composition of matter” to be broadly defined, allowing patent laws to be given wide scope. The Supreme Court also found that the bacteria described in Chakrabarty’s patent application was a product of human ingenuity and had a unique use, as the bacteria described had the ability to break down hydrocarbons, which made the novel bacterium unique to that found in nature.
The minority decision argued that the Plant Patent Act of 1930 and the Plant Variety Protection Act of 1970 set specific guidelines for the patentability of life. Justice Brennan argued that both acts were designed to set definitions on the patentability of living matter, as this is not directly defined in 35 U.S.C. 101.
Brennan argued that these acts show that the terms “manufacture” or “composition of matter” do not include living things and if they did, then neither Act would be necessary. The Plant Variety Protection Act of 1970 protects certain sexually reproduced plants, yet excludes bacteria.
The Supreme Court, however, disagreed with this and argued that the Plant Patent Act of 1930 suggests that bacteria should not be patentable. The relevant question of patentability lies in products of nature compared to human-made inventions. Chakrabarty took bacteria from nature, and genetically engineered it; therefore, Chakrabarty’s human-made bacteria is patentable.
Congress has performed its constitutional role in defining patentable subject matter in 35 U.S.C. 101. The majority decision challenged the argument that it is the responsibility of Congress, not the courts, to resolve issues of patentability; this was upheld in Marbury v. Madison, 1803 (1 Cranch 137, 177). The majority decision found 35 U.S.C. 101. to be broad enough to allow for unforeseen types of inventions. Patent laws have been created in broad terms to fulfill the constitutional goal of promoting, “the Progress of Science and the useful Arts” with the hope of social and economic benefits, which were previously anticipated by Jefferson.