If you discover one of the greatest mysteries of all time you will climb to fame. Every one will know your name. You will be in history books. All the greatest kings of the world will kneel at your feet. However, can you patent your discovery? Not necessarily. Just ask Einstein who discovered the law of gravity, a concept that has been theorized since the 1600’s. Gravity is a manifestation of nature and those, according to the Supreme Court and 35 USC § 101 are off limits! Not patentable. However, as my father would say, “you cannot know the law without knowing its exceptions,” and indeed there is an exception.
In 1980, the Supreme Court decided the case, Diamond v. Chakrabarty. In the case, a microbiologist created a man-made genetically engineered bacterium that had the capability to break down several different components of crude oil. Diamond v. Chakrabarty, 447 U.S. 303, 305 (1980). This bacterium was from the genus Pseudomonas. Id. Now bacteria from the Pseudomonas genus are gram negative bacteria. Some may horribly infect patients in the hospital, especially if those patients also happen to be burn victims. However, our scientist used the bacterium’s “powers” for good and manipulated the bacterium’s genome by inserting plasmids. Id. (We will talk about plasmids later). Because of this, the bacterium was able to break down the crude oil, and this property was not found in any other bacterium in nature. Id. Although the Office Board of Appeals concluded that § 101 of the statute was not intended to cover living things, even those created in a laboratory, the Supreme Court of the United States reversed this decision stating that the scientist’s microorganism “plainly qualifies as patentable subject matter.” Id. at 310.
The Court compared the scientist in this case with the scientist in Funk. Id. In Funk, the scientist did not create 1) a species of bacteria that has obtained a different use, 2) the combination of the species that produced new bacteria, 3) a change in any of the bacterial species and 4) “an enlargement in the range of the bacteria’s utility.” Id. As a result, the scientist in Funk did not alter the nature of the bacteria, the bacteria “perform[ed] in their natural way.” Id. Contrarily, the scientist in this case made a new bacterium, that was useful, and not like any other bacterium found in nature. Id. Therefore, the court reasoned that his discovery was “not nature’s handiwork, but his own; accordingly it is patentable. . . .” Id.
So, the exception falls under a sort of “four-factor” test, established in Funk and applied in Diamond.
- Has the bacterium/microbe obtained a different use?
- Is it a new bacterium/microbe?
- Has any change to the bacterial species been made?
- Has the bacterium’s range of utility been enlarged?
Think about it, you don’t have to be Einstein. Over and out!