Supreme Court of the United States
Sidney A. DIAMOND, Commissioner of Patents and Trademarks,
Petitioner,
v.
Ananda M. CHAKRABARTY et al.
No. 79-136.
447 U.S. 303 (1980)
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.
I
In 1972, respondent Chakrabarty, a
microbiologist, filed a patent application, assigned to the General Electric
Co. 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." [FN1] 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. [FN2]
FN1. 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
bacterium, which itself has no capacity for degrading oil.
FN2. 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.
Chakrabarty's patent claims were of three
types: 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. 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. [FN3] 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
micro-organisms.
FN3. 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.
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, 1038 (1977), which held that
"the fact that microorganisms . .
. are alive . . .
[is] without legal significance"
for purposes of the patent law. [FN4] Subsequently,
we granted the Acting Commissioner of Patents and Trademarks' 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, [98 S.Ct. 2522, 57 L.Ed.2d 451] (1978)." 438
U.S. 902, 98 S.Ct. 3119, 57 L.Ed.2d 1145 (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 (1979).
FN4. Bergy
involved a patent application for a pure culture of the micro-organism Streptomyces
vellosus found to be useful in the production of lincomycin, an antibiotic.
The Commissioner
of Patents and Trademarks again sought certiorari, and we granted the writ as
to both Bergy
and Chakrabarty. 444 U.S. 924, 100 S.Ct. 261, 62 L.Ed.2d 180
(1979).
Since then, Bergy has been dismissed as moot, 444
U.S. 1028, 100 S.Ct. 696, 62 L.Ed.2d 664 (1980),
leaving only Chakrabarty for decision.
II
The
Constitution grants Congress broad power to legislate to "promote the
Progress of Science and useful Arts, by securing for limited Times to Authors
and Inventors the exclusive Right to their respective Writings and
Discoveries." Art. I, § 8, cl. 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, 94 S.Ct. 1879, 1885-1886, 40 L.Ed.2d 315 (1974); Universal
Oil Co. v. Globe Co.,
322 U.S. 471, 484, 64 S.Ct. 1110, 1116, 88 L.Ed. 1399 (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,
416 U.S., at 480, 94 S.Ct., at 1885-86.
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 micro-organism constitutes a
"manufacture" or "composition of matter" within the meaning
of the statute. [FN5]
FN5. 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.
III
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, 99 S.Ct. 2361, 2366, 60 L.Ed.2d 980 (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, 100 S.Ct. 311, 314, 62 L.Ed.2d 199 (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, 53 S.Ct. 554, 561, 77 L.Ed. 1114 (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 or prepared materials by giving to these 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, 51 S.Ct. 328, 330, 75 L.Ed. 801 (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
Development Co. v. Watson,
149 F.Supp. 279, 280 (D.C.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, § 1, 1 Stat. 319. The Act embodied Jefferson's philosophy that
"ingenuity should receive a liberal encouragement." 5 Writings of Thomas Jefferson 75-76 (Washington
ed. 1871). See Graham
v. John Deere Co.,
383 U.S. 1, 7-10, 86 S.Ct. 684, 688-690, 15 L.Ed.2d 545 (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). [FN6]
FN6. 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 a
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).
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, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk
v. Benson,
409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk
Brothers Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O'Reilly
v. Morse,
15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le
Roy v. Tatham,
14 How. 156, 175, 14 L.Ed. 367 (1853). 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=mc 2; 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,
333 U.S., at 130, 68 S.Ct., at 441.
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] use." Hartranft
v. Wiegmann,
121 U.S. 609, 615, 7 S.Ct. 1240, 1243, 30 L.Ed. 1012 (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
species produces no new bacteria, no change in the six species of 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 ends nature originally
provided and act quite independently of any effort of the patentee." 333
U.S., at 131, 68 S.Ct., at 442.
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.
IV
Two contrary arguments are advanced, neither
of which we find persuasive.
(A)
The petitioner'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 *311 Variety
Protection Act, which authorized protection for certain sexually reproduced
plants but excluded bacteria from its protection. [FN7] In the petitioner's **2209 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
petitioner argues, neither Act would have been necessary.
FN7. 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 therefor . . . ."
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 . .
. ." 84 Stat. 1547, 7
U.S.C. § 2402(a).
See generally, 3 A. Deller, Walker on Patents, ch. IX (2d
ed. 1964); R. Allyn, The First Plant
Patents (1934).
We reject this argument.
* * *
(B)
The petitioner's second argument is that micro-organisms
cannot qualify as patentable subject matter until Congress expressly authorizes
such protection. His 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 petitioner 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 petitioner relies on our recent holding in Parker
v. Flook,
437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978),
and the statement that the judiciary "must proceed cautiously when . . . asked
to extend patent rights into areas
wholly unforeseen by Congress." Id.,
at 596, 98 S.Ct. at 2529.
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, 2
L.Ed. 60 (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 specific end use, is unpatentable subject
matter under § 101." 437
U.S., at 595, n. 18, 98 S.Ct., at 2528, 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, 98 S.Ct. at 2527. 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, 65 S.Ct. 522, 525, 89 L.Ed. 765 (1945). Accord, Browder
v. United States,
312 U.S. 335, 339, 61 S.Ct. 599, 601, 85 L.Ed. 862 (1941); *316Puerto
Rico v. Shell Co., 302 U.S. 253, 257, 58 S.Ct. 167, 169, 82
L.Ed. 235 (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. See Graham
v. John Deere Co.,
383 U.S., at 12-17, 86 S.Ct., at 691-693. Mr. Justice Douglas reminded that the
inventions most benefiting mankind are those that "push back the frontiers
of chemistry, physics, and the like."
Great
A. & P. Tea Co. v. Supermarket Corp.,
340 U.S. 147, 154, 71 S.Ct. 127, 131, 95 L.Ed. 162 (1950) (concurring opinion).
Congress employed broad general language in drafting § 101 precisely
because such inventions are often unforeseeable. [FN10]
FN10. Even an
abbreviated list of patented inventions underscores the point: telegraph (Morse, No. 1,647); 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, United States Patent and Trademark Office (1976).
To buttress his argument, the petitioner,
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 **2212 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 patentable subject matter under § 101. We disagree. The grant or denial of patents on
micro-organisms 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. [FN11]
FN11. 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. (1977); Hearings
on H.R. 4759 et al. before the Subcommittee on Health and the Environment of
the House Committee on Interstate and Foreign Commerce, 95th Cong., 1st Sess.
(1977).
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., at 194, 98 S.Ct., at 2302. 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. Cf. 42
U.S.C. § 2181(a), exempting from patent protection inventions "useful
solely in the utilization of special nuclear material
or atomic energy in an atomic weapon."
Or it may chose 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. [on the
effect of the Plant Patent Act]