How J.E.M. And Chakrabarty Make The Case For DABUS

• Published date: 24 August 2021
• Subject Matter: Intellectual Property, Technology, Patent, New Technology
• Law Firm: McKee, Voorhees and Sease
• Author: Mr Kirk M. Hartung

"Since the Supreme Court has interpreted the patent laws broadly to encompass new and unforeseen inventions, as in J.E.M., the same should be true for new and unforeseen inventors."

Twenty years ago, the U.S. Supreme Court ruled for the first time that plants could be protected with utility patents. J.E.M. Ag Supply, Inc., v. Pioneer Hi-Bred International, Inc. 534 U.S. 124 (2001). Forty-one years ago, the U.S. Supreme Court ruled for the first time that living organisms were patentable. Diamond v. Chakrabarty, 447 U.S. 303 (19080). Before these landmark cases, plants and living matter were not protectable with patents. The rationale of the Supreme Court in J.E.M. and Chakrabarty supports patent protection for inventions by non-humans, i.e., artificial intelligence inventors.

What the Supremes Have Said

J.E.M. involved the question of utility patent protection for sexually reproducing plants, including crops and flowering plants, under 35 U.S.C. § 101. Plants had historically been protected under the Plant Variety Protection Act (PVPA), 7 U.S.C. § 2321, and the Plant Patent Act (PPA, enacted in 1930), 35 U.S.C. §§ 161-164. The Supreme Court rejected the argument that the PVPA and the PPA were exclusive means for plant protection. Justice Clarence Thomas, the author of the majority opinion, noted that Congress plainly contemplated that patent laws be given wide scope, citing Chakrabarty. The Court stated, "As in Chakrabarty, we decline to narrow the reach of Section 101 where Congress has given us no indication that it intends this result." The Court explained the subject matter provisions of the patent law have been cast in broad terms, to fulfill the constitutional goal of "promoting the Progress of Science and the useful Arts, with all that means for the social and economic benefit envisioned by [Thomas] Jefferson." As further stated, Section 101 is a "dynamic provision designed to encompass new and unforeseen inventions." The Court concluded that absent a clear intent to the contrary, they would not interpret a statutory change as an affirmative decision by Congress to deny protection under Section 101.

Justice Breyer, in his J.E.M. dissent, urged the majority to divine the intent that underlies the statute, based on "an analysis for language, structure, history, and purpose."

Chakrabarty involved a man-made micro-organism used for cleaning up oil spills. The U.S. Patent and Trademark Office (USPTO) argued that living things were not patentable. The...