Ch. 1 — Summary: Issues and Options • 23 
Issue and Options — Patenting Living Organisms 
ISSl'E: I'o what extent could (]ongress 
pro\ ide for or prohibit the pat- 
enting of fix ing organisms? 
OPTIONS: 
The SuprtMiu' (\)uii slated that it was under- 
taking only the narrow task of detei'mining 
w hether or not Congress, in enacting the patent 
statutes, had intended a manmade micro-orga- 
nism to l)e e.xcluded from patentahilitv soleh' 
because it was ali\e. Moreoxer, the opinion 
specifically in\ ited Congress to ox errule the 
decision if it disagreed with the Cxnirt's inter- 
pretation. Congress can act to resoh e the ques- 
tions left unanswered hy the Court, oxerrule 
the decision, or de\ elop a comprehensive statu- 
tory approach. .Most importantly, Congress can 
draw lines; it can decide which organisms, if 
any, should he patentable. 
A. Congress could maintain the status quo. 
Congress could choose not to address the 
issue of patentability and allow the law to he 
developed by the courts. The adv antage of this 
option is that issues will be addressed as they 
arise, in the conte.xt of a tangible, nonhypo- 
thetical case. 
There are two disadv antages to this option: a 
uniform body of law may take time to develop; 
and the Federal judiciary is not designed to take 
sufficient account of the broader political and 
social interests involved. 
B. Congress could pass legislation dealing with 
the specific legal issues raised by the Court's 
decision. 
Many of the legal questions are so broad and 
v aried that they do not readily lend themselves 
to statutory resolution. The precise meaning of 
the requirements for novelty, nonobviousness, 
and enablement as applied to biological inven- 
tions will be most readily dev eloped on a case- 
by-case basis by the Patent Office and the 
Federal courts. On the other hand, some ques- 
tions are fairly narrow and well-defined; thus, 
they could be better resolved by statute. The 
most important question is whether there is a 
continuing need for the two plant protection 
acts that grant ownership I’ights to plant 
breeders who develop new and distinct 
V arieties of plants. 
C. Congress could mandate a study of the Plant 
Patent Act of 1930 and the Plant Variety Pro- 
tection Act of 1970. 
rhese ,'\cts could sei've as models for studying 
the broader, long-term potential impacts of 
patenting liv ing organisms. Such a study would 
lie timely not only because of the C'ourt's deci- 
sion, hut also because of allegations that the 
.Acts have encouraged the planting of uniform 
v arieties, loss of genetic diversity, and increased 
concenti’ation in the plant hi'eeding industi'y. 
D. Congress could prohibit patents either on any 
living organism or on organisms other than 
those already subject to the plant protection 
Acts. 
Hy pi’ohihiting patents on any living or- 
ganisms, tk)ngi’ess would he accepting the 
arguments of those who consider ownership 
rights in liv ing organisms to he immoral, or who 
ar'e concerned ahoirt other potentially adverse 
impacts of sirch jjatents. A total pr'ohibition 
vvoirld slow hirt not stop the development of 
molecular genetic techniques and the biotech- 
nologv' industr'v becairse there ar^e sever^al good 
alternatives for maintaining exclusive contr’ol of 
biological inventions. Development would be 
slowed primarily because information that 
might otherwise become public would be 
withheld as trade secrets. A major consequence 
would be that desirable products would take 
longer to reach the market. 
Alternatively, Congress could overrule the 
Supreme Court’s decision by amending the pat- 
ent law to prohibit patents on organisms other 
than the plants covered by the two statutes 
mentioned in option C. This would demonstrate 
congressional intent that living organisms could 
be patented only by specific statute. 
E. Congress could pass a comprehensive law cov- 
ering any or all organisms (except humans). 
This option recognizes that Congress can 
draw lines where it sees fit in this area. It could 
specifically limit patenting to micro-organisms, 
