In Intellectual Property Stories, J.C. Ginsburg and R.C. Dreyfuss, eds. New York: Foundation Press, 2006; pp. 327-357.
This chapter explains how the courts came to decide that living things could be patented.
Neither the courts nor Congress have revived the older idea that some kinds of inventions should not be patented.
- Patent law says that any new or useful “process, machine, manufacture or composition of matter” can be protected by a patent.
- For many decades, the courts ruled that some kinds of inventions could not be patented, such as plants, products of nature, mathematical algorithms, and business methods. Some believe that the 1952 Patent Act abolished those exceptions.
- In the 1970s, inventors began filing more patent applications for biotech inventions like oil-eating bacteria. The PTO and the courts struggled to decide whether living organisms were patentable.
- Courts and judges disagreed whether new biotech and computer technology was patentable, or unpatentable, in the absence of explicit instructions from Congress.
- Many in the public and some experts feared the idea of genetic engineering, and some opposed patenting biotechnology because of this fear.
- In Diamond v. Chakrabarty, the Supreme Court ruled that:
- Assuming that unforeseen new technology was not patentable made little sense, because patents were intended to protect unforeseen advances.
- Judges should not add their own limits on patent law to the plain language of the patent statute.
- Biotechnology such as the oil-eating bacteria were not products of nature.
- The statement that the Patent Act covers “anything under the sun that is made by man,” comes from the legislative history of the 1952 Patent Act, and is still quoted in some cases today.
- Following this case, the patent office drastically expanded the kinds of inventions it was willing to patent, to include plants, animals, some computer technology, and business methods. Neither Congress, the Supreme Court nor other courts have stopped this expansion.