252 • Impacts of Applied Genetics— Micro-Organisms, Plants, and Animals 
Issue and Options 
ISSUE: To what extent could Congress 
provide for or prohibit the pat- 
entability of living organisms? 
In its Chakrabarty opinion, the Supreme 
Court stated that it was undertaking only the 
narrow task of determining whether or not 
Congress, in enacting the patent statutes, had 
intended a manmade micro-organism to be ex- 
cluded from patentability solely because it was 
alive. Moreover, the opinion specifically invited 
Congress to overrule the decision if it disagreed 
with the Court’s interpretation. 
Congress has several options. It can act to re- 
solve the questions left unanswered by the 
Court, overrule the decision, or develop a com- 
prehensive statutory approach. Most important- 
ly, Congress can draw lines; it can decide which 
organisms, if any, should be patentable. 
OPTIONS 
A: Congress could maintain the status quo. 
Congress could choose not to address the 
issue of patentability and allow the law to be 
developed by the courts. The advantage of this 
option is that issues will be addressed as they 
arise in the context of a tangible, nonhypo- 
thetical case. Some of the issues raised in the 
debate on patenting may turn out to be irrel- 
evant as the technology and the law develop. 
Moreover, many of the uncertainties raised by 
the Chakrabarty decision regarding provisions 
of the patent law other than section 101 may be 
incapable of statutory resolution. The complexi- 
ty of living organisms and the increase in knowl- 
edge of molecular genetics will raise such broad 
and varied questions that legal interpretations 
of whether a particular biological invention 
meets the requirements of novelty, nonobvious- 
ness, and enablement will best be done on a 
case-by-case basis by the Patent Office and the 
Federal courts. 
There are two disadvantages to this option. 
First, a uniform body of law may take time to 
develop, since judicial decisions about new legal 
questions by different Federal courts may ini- 
tially conflict. Second, the Federal judiciary is 
not designed to take sufficient account of the 
broader political and social interests inx oK ed. 
B: Congress could pass legislation dealing with 
the specific legal issues raised by the Court’s 
decision. 
Many of the legal questions do not readily 
lend themselves to statutory resolution. How- 
ever, three questions are fairly nai'row and 
well-defined and may therefore he better re- 
solved by statute: 1) Is there a continuing need 
for the plant protection Acts if plants can he 
patented under section 101? 2) If there is a con- 
tinuing need for these Acts, could they he ad- 
ministered better by one agency? 3) Should th(> 
definition of infringement he clarified by 
amending section 271 of the Federal Patent 
Statutes (title 35 LI.S.C.) to include reproduction 
of a patented organism for the [jurpose of sell- 
ing it? 
Congressional action to clarity these issiu's 
would prox'ide direction for industi'v and the 
Patent Office, and it would oh\ iate thi^ need foi' 
a resolution through costly, time-consuming lit- 
igation. Lessening the chances of litigation or 
the chances of a patent being declai’('d iinalid 
will provide some stimulation for innovation by 
lessening the risks in commeix'ial de\ ('lo|)ment. 
In addition. Congress could determine that tlu* 
plant protection Acts could he better admin- 
istered by one agency or should he inc'orporated 
under the more general pi’cn isions of the patent 
law; if so, some administrative* e.\p(*nse.s prob- 
ably could be saved. 
C; Congress could mandate a study of the plant 
protection Acts. 
Two statutes, the Plant Pate'iit .Act of 15)30 
and the Plant \’ai’iety I’rotection .\ct of 15)70. 
grant ownership rights to plant breeders who 
develop new and distinct varieties ol plants 
They could serve as a model for studving the 
broader, long-term pote'iitial impacts of patent- 
ing living organisms. An em|)irical study ol the 
impacts of the plant protection laws h.is not 
been done. Such a study would he timelv not 
