^** [The Introductory Note was provided to International Legal Materials by Edith Brown Weiss, Professor, Georgetown University Law Center.]

^* The U.S. Court of Customs and Patent Appeals held that bacteria were not plants within the scope of the 1930 Plant Patent Act. In re Arzberber. 112 F.2d. 834 (1940).

¹ 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 bacteria, which itself has no capacity for degrading oil.

² At present, biological control of oil spills requires the use of a mixture of naturally oc urring 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 microorganism promises more efficient and rapid oil-spill control.

³ The Board concluded that the new bacteria were not “products of nature.” because Pseudomonas bacteria containing two or more different energy-generating plasmids arc not naturally occurring.

⁴ Bergy involved a patent application for a pure culture of the micro organism Streptomyces vellosus found to be useful in the production of rmcotnycin, an antibiotic.

⁵ 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.

⁶ This same language was employed by P. J. Federico, a principal draftsman of the 1952 recodification, in his testimony regarding that legislation: “[U]ndcr section 101 a person may have invented a machine or 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).

⁷ 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… . “ 7 U. S. C. §2402 (a).

See generally, 3 A. Deller, Walker on Patents, Chapter IX (2d ed. 1964); R. Allyn The First Plant Patents (1934).

⁸ Writing three years after the passage of the 1930 Act, R. Cook, Editor of the Journal of Heredity, commented: “It is a little hard for plant men to understand why [Article I §8] of the Constitution should not have been earlier construed to include the promotion of the art of plant breeding. The reason for this is probably to be found in the principle that natural products are not patentable.” Florists Exchange and Horticultural Trade World, July 15, 1933, at 9.

⁹ In 1873, the Patent Office granted Louis Pasteur a patent on “yeast, free from organic germs of disease, aa an article of manufacture.” and in 1967 and 1968, immediately prior to the passage of the Plant Variety Protection Act, that office granted two patents which, as the Government concedes, state claims for living micro-organisms. See Reply Brief of United States, at 3, and n. 2.

¹⁰ Even an abbreviated list of patented inventions underscores the point: telegraph (Morse, No. 1647): 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, Office of Patent. (1976).

¹¹ 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 NIHsponsored 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. (1978); Hearings before the Subcommittee on Heatlh and the Environment of the House Committee on Interstate and Foreign Commerce, 95th Cong., 1st Sess. (1977).

¹ I read the Court to admit that the popular conception, even among advocates of agricultural patents, was that living organisms were unpatentable. See ante, at 7S, and n. 8.

² But even if I agreed with the Court that the 1930 and 1970 Acts were not dispositive, I would dissent. This case presents even more cogent reasons than Deepsouth Packing Co. not to extend the patent monopoly in the face of uncertainty. At the very least, these Acts are signs of legislative attention to the problems of patenting living organisms, but they give no affirmative indication of congressional intent that bacteria be patentable. The caveat of Parker v. Flook, 437 IT. S. 584, 596 (1978). an admonition to “proceed cautiously when we are asked to extend patent rights into areas wholly unforeseen by Congress,” therefore becomes pertinent. I should think the necessity for caution is that much greater when we are asked to extend patent rights into areas Congress has foreseen and considered but has not resolved.

³ The Court refers to the logic employed by Congress in choosing not to perpetuate the “dichotomy” suggested by Secretary Hyde. Ante, at 9. But by this logic the bacteria at issue here are distinguishable from a “mineral … created wholly by nature” in exactly the same way as were the new varieties of plants. If a new act was needed to provide patent protection for the plants, it was equally necessary for bacteria. Yet Congress provided for patents on plants but not on these bacteria. In short, Congress decided to make only a subset of animate “human-made inventions,” ibid., patentable.

⁴ If the 1930 Act's only purpose were to solve the technical problem of description referred to by the Court, ante, at 8, most of the Act, and in particular its limitation to asexually reproduced plants, would have been totally unnecessary.

⁵ Secretary Hyde's letter was not the only explicit indication in the legislative history of these Acts that Congress was acting on the assumption that legislation was necessary to make living organisms patentable. The Senate Judiciary Committee Report on the 1970 Act states the Committee's understanding that patent protection extended no further than the explicit provisions of these Acts:

“Under the patent law, patent protection is limited to those varieties of plants which reproduce asexually, that is, by such methods as grafting or budding. No protection is available to those varieties of plants which reproduce sexually, that is, by seeds. S. Rep. No. 91-1246, 91st Cong., 2d SesB., 3 (1970).

Similarly, Representative Poage, speaking for the 1970 Act, after noting the protection accorded asexually developed plants, stated that “for plants produced from seed, there has been no such protection.” 122 Cong Rec 40295 (1970).