On June 16, 1980, 30 years ago today, the United States Supreme Court issued its landmark patentable subject matter decision in the case of Diamond v. Chakrabarty, which held that living matter is patentable subject matter if it is created by man. This decision revolutionized the biotechnology industry in the United States, and since has been the basis of much scorn, held up to ridicule by those who feel that living matter should not be patentable as a matter of policy. Chakrabarty was quite clearly the turning point for the biotech industry and that is emblematic of the need for an expansive view of what is patentable subject matter.
There is some irony that on the day we mark the 30th anniversary of the decision that launched the modern biotechnology industry we are still awaiting a decision on a patentable subject matter case — Bilski v. Kappos. Bilski has the potential to not only kill business methods, but also the software industry, the biotechnology industry and much of the medical innovation we see growing by leaps and bounds. So for today I toast the Supreme Court decision that launched the biotech industry, created millions of jobs and has lead to innumerable cures and treatments. I just hope that tomorrow (or whenever the Supreme Court issues its Bilski decision) it is not all for naught.
Earlier today Biotechnology Industry Organization President and CEO Jim Greenwood put into perspective the importance of Chakrabarty, saying:
The Supreme Court’s decision in Diamond v. Chakrabarty thirty years ago today was instrumental in spurring the creation of a dynamic and flourishing biotech industry. By finding that subject matter derived from nature is eligible for patenting if it is modified by man into something new, useful and unobvious, the Court provided assurance to biotech companies and their investors that emerging technologies are protected by the patent system even if they could not have been foreseen when the system was created 200 years earlier.
Since the Court’s decision, the biotechnology industry in the United States has improved and saved lives around the world through breakthrough medical therapies, increased crop yields, and renewable fuels. Our industry is a key component of the nation’s innovation economy, supporting more than 7.5 million jobs throughout the country and providing the United States with a global competitive advantage.
Could you imagine what the US economy would look like without the biotechnology industry? Those 7.5 million jobs are roughly equivalent to the number of jobs the United States has lost since the start of this Great Recession. Without them it is hard to imagine what state the United States would be in from an economic and national security standpoint.
Ananda M. Chakrabarty is current a Distinguished Professor in the Department of Microbiology and Immunology in the University of Illinois at Chicago College of Medicine. Back in the late 1970s he was a scientist working for General Electric. As a result of his work as a microbiologist for GE he filed a patent application on an invention relating to 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. If that is going over your head, no worries. Suffice it to say that in layman’s terms the invention was a man-made, genetically engineered bacterium capable of breaking down multiple components of crude oil. This man-made, genetically engineered bacterium possessed specialized characteristics not found in any naturally occurring bacteria, and it was believed that the invention might be useful for the treatment of oil spills, a matter of great importance at the moment.
Unfortunately, the Chakrabarty bacterium was unstable and after several generations the ability to bread down oil was greatly reduced. In patent terms, however, the invention was new, nonobvious and useful because it worked, although not as well ultimately as hoped. So the question was whether it was patentable subject matter. Said another way, would US laws allow for Chakrabarty’s invention to receive a patent even if it were described adequately, was proved to be new, was proved to be non-obvious and useful.
In Chakrabarty the Supreme Court noted that the United States Congress chose expansive terms such as “manufacture” and “composition of matter,” modified by the comprehensive “any,” in the patentable subject matter law, 35 USC 101, which says:
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.
Furthermore, it was noted, as has been the case in every patentable subject matter decision, that the Legislative History to the 1952 Patent Act explained that it was the intent of Congress to allow patents on “anything under the sun that is made by man.” As a result of the expansive view of patentability demanded by Congress the Supreme Court had little difficulty finding the Chakrabarty innovation to be patentable subject matter.
Certainly an expansive view of what should be patentable subject matter, and one that has consistently lead the United States to allow patents for revolutionary innovations that could never have been contemplated by the Founding Fathers, Congress or anyone for that matter. In fact, it is this expansive view of patentable subject matter that has kept the U.S. on the cutting edge of innovation.
The Bilski case deals with what should be an easy case. The inventor looked, thought and acted. There was nothing tied to any physical apparatus, just a purely mental business method. But rather than limit the decision to the facts of the case the Federal Circuit decided to take the occasion to issue a sweeping decision that called into question the patentability of all methods, particularly software and biotechnology methods. Luckily, the United States Patent and Trademark Office has not interpreted Bilski as broadly as even the express terms of the decision require, so for now patents are still issuing, but a misguided Supreme Court decision continues to be a worrisome fear.
As Judge Newman pointed out in her Bilski dissent: “It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.” Indeed, the real fear posed by narrow-minded interpretations of what qualifies as patentable subject matter is not what we know to be cut off, but rather what we don’t know will be cut off. Had the Supreme Court decided Chakrabarty the other way it is reasonable to assume the biotech industry would never have flourished. Without patents it would have been starved of funding, medical advances would not have occurred and the high paying technology jobs the industry created would not have existed.
I hope the Supreme Court is paying attention to this 30th anniversary of Chakrabarty.