Five Supreme Court decisions, from 1966 to 2013, show how the Court has set the edges of patent law: how different an invention must be from what came before, what living things and ideas can be patented, and whether a gene can be patented.
The test for obviousness
Graham v. John Deere Co. of Kansas City (1966), decided February 21, 1966. The case combined a patent on a device that absorbs shock from plow shanks in rocky soil with two cases about a plastic finger sprayer used as a built-in dispenser on containers of liquids, mainly insecticides. Justice Clark, for the Court, applied §103 of the Patent Act of 1952, which requires that the subject matter be nonobvious to a person with ordinary skill in the field. "Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved." The Court held that none of the patents met the test and affirmed the judgment in the plow case and reversed in the sprayer cases.
A living organism
Diamond v. Chakrabarty (1980), decided June 16, 1980. Ananda Chakrabarty, a microbiologist, applied for a patent, assigned to General Electric, on a bacterium from the genus Pseudomonas containing plasmids that let it break down several components of crude oil, a property possessed by no naturally occurring bacteria. The Patent Office Board of Appeals affirmed a rejection on the ground that living things are not patentable. Chief Justice Burger, for the Court, held that the bacterium is patentable subject matter. He noted that Congress intended statutory subject matter to "include anything under the sun that is made by man," and wrote that "the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions." Justice Brennan dissented, joined by Justices White, Marshall and Powell.
When a combination is obvious
KSR International Co. v. Teleflex Inc. (2007), decided April 30, 2007. KSR supplied adjustable pedal systems to General Motors, adding a modular sensor to make them work with trucks with computer-controlled throttles. Teleflex held the exclusive license for the Engelgau patent, whose claim 4 covers a position-adjustable pedal assembly with an electronic pedal position sensor attached to a fixed pivot point. The Federal Circuit had applied a "teaching, suggestion, or motivation" test, under which a claim is obvious only if some motivation to combine the prior art can be found in the prior art, the nature of the problem or the knowledge of a skilled person. Justice Kennedy, for a unanimous Court, reversed. "The results of ordinary innovation are not the subject of exclusive rights under the patent laws," he wrote, and the Federal Circuit had addressed obviousness in too narrow and rigid a manner.
Business methods
Bilski v. Kappos (2010), decided June 28, 2010. Bernard Bilski and Rand Warsaw applied for a patent on a method for hedging, or protecting, buyers and sellers in the energy market against the risk of price changes. The Federal Circuit applied a "machine-or-transformation" test and held the application not patent eligible. Justice Kennedy, for the Court, agreed with the result but not the test: "The machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101," but it is not the sole test. The Court held that hedging is "an unpatentable abstract idea." "Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields."
Isolated genes
Association for Molecular Pathology v. Myriad Genetics, Inc. (2013), decided June 13, 2013. Myriad Genetics obtained patents after discovering the precise location and sequence of the BRCA1 and BRCA2 genes, mutations of which can dramatically increase the risk of breast and ovarian cancer. Justice Thomas, for the Court, held that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA, which is not naturally occurring, is patent eligible. "Myriad did not create or alter either the genetic information encoded in the BRCA1 and BRCA2 genes or the genetic structure of the DNA. It found an important and useful gene, but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry."
What the five decisions show
Graham and KSR concern how much an invention must add to what was already known. Chakrabarty, Bilski and Myriad concern what can be patented at all: a human-made organism, yes; an abstract idea, no; a naturally occurring gene, no, though a cDNA sequence, yes. This post covers five decisions, and it does not cover the Court's other patent cases.
Sources
- Graham v. John Deere Co. of Kansas City (1966), 383 U.S. 1: Library of Congress, U.S. Reports
- Diamond v. Chakrabarty (1980), 447 U.S. 303: Library of Congress, U.S. Reports
- KSR International Co. v. Teleflex Inc. (2007), 550 U.S. 398: Library of Congress, U.S. Reports
- Bilski v. Kappos (2010), 561 U.S. 593: Library of Congress, U.S. Reports
- Association for Molecular Pathology v. Myriad Genetics, Inc. (2013), 569 U.S. 576: Library of Congress, U.S. Reports
Updated November 2026.
This post was rewritten with AI (Claude) and reviewed by an editor before publication.
