Sidney A. Diamond was born October 17, 1914, in New York City. He received a bachelor’s degree from Dartmouth College and a law degree from Harvard University.
He practiced law in New York City and Washington, D.C. From 1943-46 he worked for the Justice Department as special attorney and special assistant to the attorney general. From 1971-78 he lived in Tucson, Arizona.
In the spring of 1978 President Jimmy Carter appointed Diamond assistant commissioner of trademarks, a post that at the time required presidential appointment with Senate confirmation. Later that year President Carter elevated him to commissioner of patents and trademarks. Diamond took the oath of office on November 29, 1979.
Diamond was the first trademark law specialist to head the office. He had served on the U.S. delegation to a 1973 diplomatic conference in Vienna that resulted in the Trademark Registration Treaty.
Before and after his government service he wrote many articles in legal and other journals on trademark and copyright matters. For several years he wrote a feature column in Advertising Age magazine. The columns were the basis for his popular book Trademark Problems and How to Avoid Them.
Diamond’s tenure as commissioner was marked by important court decisions and legislation. The Supreme Court dealt with two landmark patent cases bearing his name: Diamond v. Chakrabarty and Diamond v. Diehr.
In the Chakrabarty case the issue was whether a genetically modified microorganism was eligible for patenting. Patent applicant Chakrabarty had genetically engineered a bacterium capable of breaking down crude oil, which he proposed to use in treating oil spills. The court said a living, human-made organism was patentable subject matter under Section 101 of the Patent Act.
The Diehr decision opened the door for patenting software-related inventions. The court held that a process claim for curing synthetic rubber using a mathematical formula in a programmed digital computer was proper subject matter for a patent.
At the end of 1980 Congress passed and President Carter signed major legislation that, among other things, established for the first time a system for patent reexamination. Under the new law any person, including the patent owner, could request reexamination of a patent in light of earlier patents and publications. Reexamination could be requested at any time after patent grant. If the commissioner determined that the requester had raised “a substantial new question of patentability” the patent would be reexamined. The new law also permitted amendments of patent claims during reexamination.
The same 1980 legislation that established patent reexamination also, in a separate chapter, dealt with intellectual property rights arising from federal government-funded research. Senators Birch Bayh of Indiana and Bob Dole of Kansas sponsored the chapter, and it became known as the Bayh-Dole Act.
Before Bayh-Dole, federal research contracts required inventors to transfer ownership of inventions made with federal funding to the government. To promote commercialization of inventions, the legislation permitted universities, small businesses, and non-profit institutions, in certain circumstances, to retain ownership.
In 1980 the office celebrated the 50th anniversary of the Plant Patent Act of 1930, which protected asexual reproduction (reproduction without seeds) of living plants. A leading hybridizer was honored at the opening of a floral exhibition.
Diamond resigned on January 17, 1981, after the election of President Ronald Reagan, and resumed law practice. He died in Tucson, Arizona on March 4, 1983.
FURTHER READING
Bloomberg BNA, Weekly Patent, Trademark & Copyright Journal (1979-81).
Sidney A. Diamond, Trademark Problems and How to Avoid Them (1981).
USPTO, Annual Reports of the Commissioner of Patents and Trademarks (1979-81).
USPTO, The Story of the U.S. Patent and Trademark Office (1988).