Ch. 12 — Patenting Living Organisms • 239 
known or used publidv by others in tbe United 
States, or 3) tbe invention was previously de- 
scribed in a U.S. or foreign patent or publica- 
tion. rbe inability to meet the novelty require- 
ment is another reason u by products of nature 
are unpatentable. \onob\ iousness refers to tbe 
degree of difference between tbe in\ ention and 
the prior art. If tbe invention would have been 
obvious at tbe time it was made to a person with 
ordinary skill in that field of technolo^v, then it 
is not })atentable. The policy behind tbe dual 
' criteria of nov eltv and nonobv iousness is that a 
i patent should not take fi'om the public some- 
' thing which it already enjoys or potentially 
! enjoys as an obv ious e.\ tension of current 
' knowledge. 
rbe final re(|uirement— for adequate public 
disclosure of an inv ention— is know n as the en- 
I ablement requirement. It is designed to ensure 
I that the [)ublic receives the full benefit of the 
I new knowledge in return for granting a limited 
I monopoly. .As a public document, tbe patent 
must contain a sufficiently detailed description 
of tbe invention so that others in that field of 
technolo^v can build and use it. At the end of 
this description are the claims, which define the 
boundaries of the invention protected by the 
patent. 
The differences between trade secrets and 
patents, therefore, center on the categories of 
inventions protected, the term and degree of 
protection, and the disclosure required. Only 
those inventions meeting the statutory require- 
ments outlined above qualify for patents and 
then only for a limited time, whereas anvthing 
giving an adv antage over business competitors 
qualifies as a trade secret for an unlimited time. 
A patent requires full public disclosure, while 
trade secrecy requires an explicit and often 
costly effort to withhold information. The pat- 
ent law provides rights of exclusion against 
everyone, even subsequent independent inven- 
tors, while the trade secrecy law protects only 
against wrongful appropriation of the secret. 
Living organisms 
Although the law for protecting inv'entions is 
[Usually thought of as applying to inanimate ob- 
jects, it also applies to certain living organisms. 
Any organism that both meets the broad defini- 
tion of a trade secret and may be lawfully 
owned by a private person or entity can be pro- 
tected by that body of law, including micro- 
organisms, plants, animals, and insects. In addi- 
tion, plants are covered specifically by two Fed- 
eral statutes, the Plant Patent Act of 1930 and 
the Plant \ arietv Protection Act of 1970. Fur- 
thermore, the Supreme Court has now ruled 
that manmade micro-organisms are covered by 
tbe patent statutes. Its determination of con- 
gressional intent in the Chakrabarty case was 
based significantly on an analysis of the two 
plant protection statutes. 
Patent protection for plants was not available 
until Congress passed the Plant Patent Act of 
1930, recognizing that not all plants were prod- 
ucts of nature because new varieties could be 
created by man. This Act covered new and dis- 
tinct asexually reproduced varieties other than 
tuber-propagated plants or those found in na- 
ture.* The requirement for asexual reproduc- 
tion was based on the belief that sexually 
reproduced varieties could not be reproduced 
true-to-type and that it would be senseless to try 
to protect a variety that would change in the 
next generation. To deal with the fact that or- 
ganisms reproduce, the Act conferred the right 
to exclude others from asexually reproducing 
the plant or from using or selling any plants so 
reproduced. It also liberalized the description 
requirement for plants. Because of the impos- 
sibility of describing plants with the same de- 
gree of specificity as machines, their description 
need only be as complete as is "reasonably possi- 
ble." 
By 1970, plant breeding technology had ad- 
vanced to where new, stable, and uniform vari- 
eties could be sexually reproduced. As a result. 
Congress provided patent-like protection to 
novel varieties of plants that reproduced sexu- 
ally by passing the Plant Variety Protection Act 
of 1970. Fungi, bacteria, and first-generation 
hybrids were excluded. * * Hybrids have a built- 
* Approximately 4,500 plant patents have been issued to date, 
most for roses, apples, peaches, and chrysanthemums. 
•'Originally, six v'egetables— okra, celery, peppers, tomatoes, 
carrots, and cucumbers— were also excluded. On Dec. 22, 1980, 
President Carter signed legislation (H.R. 999) amending the Plant 
\’ariety Protection Act to include these vegetables, to extend tbe 
term of protection to 18 years, and to make certain technical 
changes. 
