Upload
lamhuong
View
225
Download
1
Embed Size (px)
Citation preview
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions
and requirements of this title.
1952 Patent Act, Section 101
INVENTION AND DISCOVERY
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions
and requirements of this title.
1952 Patent Act, Section 101
INVENTION AND DISCOVERY
• 1790 Patent Act, §1
– Granted patents to any person who “invented or discovered any useful art, manufacture, engine, machine, or device . . . if they shall deem the invention or discovery sufficiently useful and important. . . .”
• Dual emphasis on invention or discovery carried forward
– 1793 Act
– 1836 Act
– 1870 Act
Invention and Discovery in the Patent Statutes
INVENTION AND DISCOVERY
Whoever imagines that, because so many inventions
and so many improvements in machinery have been
made, there remains little else to be discovered, has but
a feeble conception of the infinitude and vastness of
mechanical powers, or of the unlimited reach of science.
Much as has been discovered, infinitely more remains
unrevealed.
The ingenuity of man is exploring a region without limits,
and delving in a mine whose treasures are exhaustless.
‘Neither are all the mysteries of nature unfolded, nor the
mind tired in the pursuit of them.’
Senate Report, 1836 Act
INVENTION AND DISCOVERY
Discoveries: The Plant Patent Act of 1930
INVENTION AND DISCOVERY
H.R. REP. NO. 71-1129; S. REP. NO. 71-315
(Committees on Patents)
Discoveries: The Plant Patent Act of 1930
INVENTION AND DISCOVERY
H.R. REP. NO. 71-1129; S. REP. NO. 71-315
(Committees on Patents)
• Act of 1930 contemplated
protection for cultivated
– Mutants
– Hybrids
– Bud sports
• Discovery of bud sport +
conventional cutting or
grafting → patentable
invention
Quantum of Invention under 1930 Act
INVENTION AND DISCOVERY
• Earlier versions of bill included separate definition of ‘invented or discovered’ for plants
– Removed when bill changed to preclude patenting of wild finds
• Congress rejected PTO suggestion to separate plant and utility statutes
Patentability Statute after 1930 Amendments
INVENTION AND DISCOVERY
• Patentability of syngonium seedling found on
cultivated land
• Board holds that “invented and discovered” must have
same meaning for plant and utility patents
• Mere discovery of new plant cannot qualify as
“invention or discovery,” even if arose on cultivated
land
Ex parte Foster (Bd. Pat. App. 1951)
INVENTION AND DISCOVERY
• Congress amends plant statute in 1954 to clarify that
seedlings found on cultivated land are patentable
It is the opinion of the committee that the enactment of this bill, as
amended, will not only remove any doubt that the legislative intent of the
Congress when it enacted the plant patent amendments clearly intended
that sports, mutants, hybrids, and seedlings, discovered by persons
engaged in agriculture or horticulture, should be patentable....
Ex parte Foster (Bd. Pat. App. 1951)
INVENTION AND DISCOVERY
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art or method, and
includes a new use of a known process, machine, manufacture,
composition of matter, or material.
35 U.S.C. §100
INVENTION AND DISCOVERY
[D]iscussions of the patentability of new uses are usually
concerned with the simple situation in which a discovery has
been made that a known substance or thing has some hitherto
unknown property, or can be used to obtain a particular result
for which is had not been used before.
Since there is no new or improved object produced, the only
things left to consider are the acts performed, which leads to a
process or method and the statute, as has been said, recognizes
a process or method which involves only a new use of an old
material, as within the field of subject matter capable of being
patented.
Federico’s Commentary on the New Patent Act
INVENTION AND DISCOVERY
It is believed that the primary significance of the definition of
method above referred to is merely that a method claim is not
vulnerable to attack, on the ground of not being within the
field of patentable subject matter, merely because it may recite
steps conventional from a procedural standpoint and the
novelty resides in the recitation of a particular substance,
which is old as such, used in the process.
Federico’s Commentary on the New Patent Act
INVENTION AND DISCOVERY
The Court's precedents provide three specific exceptions to
§101's broad patent-eligibility principles: "laws of nature,
physical phenomena, and abstract ideas." While these
exceptions are not required by the statutory text, they are
consistent with the notion that a patentable process must be
"new and useful."
And, in any case, these exceptions have defined the reach of
the statute as a matter of statutory stare decisis going back 150
years.
Bilski v. Kappos (2010)
INVENTION AND DISCOVERY
• Parker v. Flook (1978)
– Suggestion that fundamental principles be treated as part of
prior art
• Funk Brothers (1948)
• Neilson v. Harford (1841)
Roots of Mayo “Inventive Application”
INVENTION AND DISCOVERY
1. An inoculant for leguminous plants comprising a plurality
of selected cultures . . . said cultures being substantially
unaffected by each other in respect to their ability to fix
nitrogen . . . .
No method has been observed whereby the [non-inhibitive]
strains of the organisms may be differentiated . . . other than
by making actual nitrogen fixation tests . . . with the proposed
mixture.
Funk Bros. v. Kalo Inoculant (1948)
INVENTION AND DISCOVERY
But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants.
But a product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery. Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84.
[O]nce nature’s secret of the non-inhibitive quality of certain strains of the species Rhizobium was discovered, the state of the art made the production of a mixed inoculant a simple step.
Funk Bros. v. Kalo Inoculant (1948)
INVENTION AND DISCOVERY
But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants.
But a product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery. Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84.
[O]nce nature’s secret of the non-inhibitive quality of certain strains of the species Rhizobium was discovered, the state of the art made the production of a mixed inoculant a simple step.
Funk Bros. v. Kalo Inoculant (1948)
INVENTION AND DISCOVERY
But we think that that aggregation of species fell short of
invention within the meaning of the patent statutes.
The aggregation of select strains of the several species into
one product is an application of that newly-discovered natural
principle.
No species acquires a different use. The combination of
species produces no new bacteria, no change in the six species
of bacteria, and no enlargement of the range of their utility.
Each species has the same effect it always had.
Funk Bros. v. Kalo Inoculant (1948)
INVENTION AND DISCOVERY
• Davison Chem. v. Joliet Chem. (7th Cir. 1950)
– Improved process for controlling gel porosity
– Effect of temperature on gel porosity discovery of a scientific fact
• In re Arnold (CCPA 1950)
– Improved process for electrostatic welding
– Obvious application of discovery of properties of surface versus interior molecules
• Nat’l Lead v. Western Lead (9th Cir. 1963)
– Improved process for lead oxide suspension
– Once relationship between reaction temperature and product uniformity known, no invention in means of regulation
• Armour Pharm. v. Richardson-Merrell (3rd Cir. 1968)
– Enteric-coated trypsin formulation
– Obvious application of discovery that small intestine will absorb trypsin
Funk’s Progeny
INVENTION AND DISCOVERY
This Court has previously discussed in detail an English case,
Neilson, which involved a patent claim that posed a legal
problem very similar to the problem now before us. . . .
The English court concluded that the claimed process did
more than simply instruct users to use the principle that hot air
promotes ignition better than cold air, since it explained how
the principle could be implemented in an inventive way.
Mayo and Neilson v. Harford (Exch. 1841)
INVENTION AND DISCOVERY
Mayo v. Prometheus, 132 S.Ct. 1289, 1300 (2012)
Mayo and Neilson v. Harford (Exch. 1841)
INVENTION AND DISCOVERY
Thus, the claimed process included not only a law of nature but also
several unconventional steps (such as inserting the receptacle
externally, and blowing the air into the furnace) that confined the
claims to a particular, useful application of the principle.
Mayo and Neilson v. Harford (Exch. 1841)
INVENTION AND DISCOVERY
Thus, the claimed process included not only a law of nature but also
several unconventional steps (such as inserting the receptacle
externally, and blowing the air into the furnace) that confined the
claims to a particular, useful application of the principle.
Patentee’s Argument in Neilson:
The mode of heating air was perfectly well known; it was no discovery of Mr. Neilson’s, every body knew it. Air had been heated and there had been different shaped vessels employed for heating the air; for heating the air economically, and for heating it to a higher or lesser degree of temperature; all that was perfectly well known.
Mayo and Neilson v. Harford (Exch. 1841)
INVENTION AND DISCOVERY
Thus, the claimed process included not only a law of nature but also
several unconventional steps (such as inserting the receptacle
externally, and blowing the air into the furnace) that confined the
claims to a particular, useful application of the principle.
Alderson, B. in Neilson:
The blowing apparatus was perfectly well known; the heating of air was perfectly well known; the twire was perfectly well known as applicable to blast furnaces; then what he really discovered is, that it would be better for you to apply air heated up to red heat, or nearly so, instead of cold air as you have hitherto done.
Mayo and Neilson v. Harford (Exch. 1841)
INVENTION AND DISCOVERY
The English court concluded that the claimed process did more than
simply instruct users to use the principle that hot air promotes ignition
better than cold air, since it explained how the principle could be
implemented in an inventive way.
It is very difficult to distinguish it from the specification of a
patent for a principle, and this at first created in the minds of
some of the court much difficulty; but after full consideration
we think that the plaintiff does not merely claim a principle,
but a machine, embodying a principle, and a very valuable
one.
We think the case must be considered as if the principle being
well known, the plaintiff had first invented a mode of applying
it by a mechanical apparatus to furnaces; and his invention
then consists in this: by interposing a receptacle for heated air
between the blowing apparatus and the furnace.
Neilson v. Harford: The Famous Passage
INVENTION AND DISCOVERY
It is very difficult to distinguish it from the specification of a
patent for a principle, and this at first created in the minds of
some of the court much difficulty; but after full consideration
we think that the plaintiff does not merely claim a principle,
but a machine, embodying a principle, and a very valuable
one.
We think the case must be considered as if the principle being
well known, the plaintiff had first invented a mode of applying
it by a mechanical apparatus to furnaces; and his invention
then consists in this: by interposing a receptacle for heated air
between the blowing apparatus and the furnace.
Neilson v. Harford: The Famous Passage
INVENTION AND DISCOVERY
[I]t was the application of a well-known principle, but for the first time applied to a chair. . . . Lord Lyndhurst and the rest of the court held, that this was not a claim to a principle, but to the construction of a chair on this principle, in whatever shape or form it may be constructed. Just so as to the hot blast, only the principle is also new.
Principle or Machine? Minter v. Wells (Exch. 1834)
INVENTION AND DISCOVERY
Househill Coal & Iron Co. v. Neilson (Ct. of Session 1843)
It is quite true that a patent cannot be taken out solely for an abstract
philosophical principle—for instance, for any law of nature, or any
property of matter, apart from any mode of turning it to account in
the practical operations of manufacture, or the business, and arts,
and utilities of life. The mere discovery of such a principle is not an
invention, in the patent law sense of the word. . . .
But a patent will be good, though the subject of a patent consists in
the discovery of a great, general, and most comprehensive principle
in science or law of nature, if that principle is by the specification
applied to any special purpose, so as thereby to effectuate a practical
result and benefit not previously attained.
Househill v. Neilson (Court of Session 1843)
INVENTION AND DISCOVERY
The main merit, the most important part of the invention, may
consist in the conception of the original idea—in the discovery
of the principle in science, or of the law of nature, stated in the
patent, and little or no pains may have been taken in working
out the best manner and mode of the application of the
principle to the purpose set forth in the patent.
Househill v. Neilson (Court of Session 1843)
INVENTION AND DISCOVERY
• Curtis
– Principle “abstracted from practical application” unpatentable
– Means of application need not be novel
• Merwin
– Nevertheless, the means by which the principle is applied
may be devoid of all invention, and such as any workman
skilled in the art wherein the application is made might
supply, when the discovery is told him.
• Robinson
– ‘Discovery’ of quality in nature: exercise of ‘inventive faculties’
– ‘Developing operative means: not inventive faculties
19th Century Patent Authorities
INVENTION AND DISCOVERY
• Business methods
• Mental steps
• Natural Products
– Parke-Davis
• Purified adrenalin patentable
– General Electric / Marden
• Purified tungsten / vanadium / uranium
unpatentable
• By 1939 CCPA settles on position that purified
products may be patentable if purified form
shows utility not possessed by natural source
Early 20th Century Subject Matter Exclusions
INVENTION AND DISCOVERY
• Dick v. Lederle Labs. (S.D.N.Y. 1930)
– Discovery: soluble toxin cause of scarlet fever
– Administration of purified toxins to humans /
animals routine, but patentable
• Guaranty Trust v. Union Solvents (D. Del. 1931)
– Novelty in Weizmann acetone fermentation
process was newly isolated bacteria
– Fermentation process identical to prior art
20th Century: Lower Courts
INVENTION AND DISCOVERY
2. A method for logging a bore hole drilled for the
production of petroleum which comprises
securing samples of earth at spaced points along the
bore hole for a considerable portion of its length…
subjecting each sample to a treatment suitable for
the recovery therefrom of a hydrocarbon gas,
quantitatively analyzing the gas so recovered from
each sample for its content of at least one selected
hydrocarbon which is the same for all the samples, and
correlating the contents so determined with sample
depth.
Claim in Rosaire v. Baroid (5th Cir. 1955)
INVENTION AND DISCOVERY
• DeForest Radio (1931)
– High-vacuum triode would be patentable if
Langmuir had been first to discover pure electron
discharge
– Lillienfeld had described pure electron discharge
prior to Langmuir’s patent
• Mackay Radio (1939)
– “novel and useful structure created with the aid of
knowledge of scientific truth” patentable
– Patentee had not discovered new “scientific law”
20th Century: Supreme Court
INVENTION AND DISCOVERY
It is quite true that a patent cannot be taken out solely for an abstract
philosophical principle—for instance, for any law of nature, or any
property of matter, apart from any mode of turning it to account in
the practical operations of manufacture, or the business, and arts,
and utilities of life. The mere discovery of such a principle is not an
invention, in the patent law sense of the word. . . .
But a patent will be good, though the subject of a patent consists in
the discovery of a great, general, and most comprehensive principle
in science or law of nature, if that principle is by the specification
applied to any special purpose, so as thereby to effectuate a practical
result and benefit not previously attained.
Househill v. Neilson (Court of Session 1843)
INVENTION AND DISCOVERY