Chapter 12 
Patenting Living Organisms 
A landmark decision 
In a 5 to 4 decision (Diamond \ . Chakrabartv, 
June 16, 1980), the Supreme Court ruled that a 
manmade mico-organism is patentable under 
the current patent statutes. This decision was 
alternately hailed as ha\ ing "assured this coun- 
try’s technology' future”’ and denounced as cre- 
ating “the Bra\ e New W orld that Aldous Huxley 
warned ot.”^ Howe\er, the Court clearly stated 
that it was undertaking only the narrow task of 
determining u hether or not Congress, in enact- 
ing the patent statutes, had intended a man- 
made micro-organism to be excluded from pat- 
entability solely because it was ali\ e. Moreov er, 
the opinion invited Congress to overturn the 
decision if it disagreed with the Court’s inter- 
pretation. 
■Prepared Statement of (ienentech. Inc., cited in "Science .Vlav 
Patent New Forms of Life. Justices Rule, 5 to 4. The ,Ven York 
Times. June 17 1980. p 1 
'Prepared statement of the Peoples' Business Commission, cited 
in "Science May Patent .\ew Forms of Life, Justices Rule, 5 to 4,” 
The .\ew York Times, June 17, 1980, p. 1. 
Congress may want to reconsider the issue of 
whether and to what extent it should specifi- 
cally provide for or prohibit the patentability of 
living organisms. While the judiciary operates 
on a case-by-case basis, Congress can consider 
all the issues related to patentability at the same 
time, gathering all relevant data and taking tes- 
timony from the interested parties. The issues 
involved go beyond the narrow ones of scien- 
tific capabilities and the legal interpretations of 
statutory wording. They require broader deci- 
sions based on public policy and social values; 
Congress has the constitutional authority to 
make those decisions for society. It can act to re- 
solve the questions left unanswered by the 
Court, ov'errule the decision, or develop a com- 
prehensive statutory approach, if necessary. 
Most importantly. Congress can draw lines; it 
can specifically decide which organisms, if any, 
should be patentable. 
Legal protection of inventions 
The inherent ‘Tight” of the originator of a 
new idea to that idea is generally recognized, at 
least to the extent of deserving credit for it 
when used by others. At the same time, it is also 
believed that worthwhile ideas benefit society 
when they are widely av ailable. Similarly, when 
an idea is embodied in a tangible form, sucb as 
in a machine or industrial process, the inventor 
has the "right” to its exclusive posession and use 
simply by keeping it secret. However, if he may 
be induced to disclose the inv'ention’s details, 
society benefits from the new ideas embodied 
therein, since others may build upon the new 
knowledge. The legal system has long recog- 
nized the competing interests of the inventor 
and the public, and has attempted to protect 
both. The separate laws covering trade secrets 
and patents are the mean by which this is done. 
Trade secrets 
The body of law governing trade secrets rec- 
ognizes that harm has been done to one person 
if another improperly obtains a trade secret and 
then uses it personally or discloses it to others. 
A trade secret is anything— device, formula, or 
information— which when used in a business 
provides an advantage over competitors ig- 
norant of it— e.g., improper acquisition includes 
a breach of confidence, a breach of a specific 
promise not to disclose, or an outright theft. 
Trade secrecy is derived from the common law. 
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