Guest Post by Jon M. Harkness. Dr. Harkness is a historian and a newly minted patent attorney. This post is based on his examination of the 1911 Learned Hand adrenaline case, Parke-Davis v. Mulford, which undergirds some of the policies at stake in AMP v. Myriad. His recently published JPTOS article covers the topic in more detail. Download 93JPTOS2011. Readers can reach Dr. Harkness directly at jon.harkness@comcast.net.
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Students of patent law are taught that purified or isolated products of nature possessing utility can be patented because—essentially—"Learned Hand said so" in a case about adrenaline:
[E]ven if it were merely an extracted product without change, there is no rule that such products are not patentable. Takamine [the inventor] was the first to make it available for any use by removing it from the other gland-tissue in which it was found, and, while it is of course possible logically to call this a purification of the principle, it became for every practical purpose a new thing commercially and therapeutically. That was a good ground for a patent. Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95, 103 (C.C.S.D.N.Y. 1911)
Briefs in the AMP v. Myriad "gene patent" suit are thoroughly sprinkled with references to this language, and all four judicial opinions that have been rendered to date in Myriad have discussed this aspect of Learned Hand's 1911 adrenaline opinion.
But it seems that no one has previously taken a close look at what actually happened in this old case. In the spring of 2011, I decided to quench my curiosity by visiting the New York branch of the National Archives to examine approximately 1,000 pages of records from Parke-Davis held there. (Coincidentally, my first day in the archives was the same day that the Federal Circuit initially heard oral arguments in Myriad.)
Two major revelations emerged from my research. First, the prosecution of the Adrenalin patent application, between the fall of 1900 and the spring of 1903, involved an extended debate on the product-of-nature problem. Perhaps my most important finding is that this debate took place within the bounds provided by an 1889 case, Ex parte Latimer, in which a patent on the isolated fibrous core of a pine needle had been rejected as constituting unpatentable subject matter. Download 1889 Dec Commr Pat 123 ex parte Latimer. Relatively early in the Adrenalin patent application process, the applicant, Jokichi Takamine, and his attorneys acknowledged that Latimer provided "the official interpretation of the doctrine involved." Thus, Takamine was forced to argue that his product was chemically different than the hormone—not just purified or isolated. (The arguments were somewhat abstract because the applicant did not know the precise chemical formulae for either his medical product or the naturally occurring hormone.)
The patent examiner, James B. Littlewood (an M.D. with formal training in patent law, who had been head of the USPTO's Division of Chemistry for a decade) was not easily convinced. For example, after one lengthy attempt by Takamine to argue that Adrenalin was "a new article . . . not anticipated by a naturally existing article as was Latimer's claim," Littlewood stated his objections in especially blunt and revealing terms: "The argument of applicant has been carefully read but it is fatally defective for the reason that the product he obtains . . . is simply separated from impurities." Littlewood explicitly pointed to Latimer to justify his rejection: "The examiner does not assert that the active principle [of the adrenal gland] exists, freed from impurities in nature; neither did Latimer's fibre; but it did exist and therefore is not patentable." (A copy from this exchange can be seen here: Download 889-890 Littlewoood rejection.)
Takamine's attorneys never argued that the Latimer rule was invalid nor did they argue that Littlewood's understanding of the rule was flawed. Instead, they repeatedly attempted to convince Littlewood that Adrenalin was something other than a purified or isolated version of the naturally occurring hormone. Eventually, Littlewood accepted this line of argumentation and granted a product patent.
The second major revelation that emerged from my research is that—by contrast to patent prosecution for Adrenalin—the patent litigation between Parke-Davis and Mulford had nothing to do with Adrenalin being an isolated or purified product of nature. It was basically a protracted priority/novelty dispute. None of the briefs submitted to Learned Hand mentioned the product-of-nature issue. And here's some especially striking evidence: each side had a top-notch expert witness, and during a combined total of 53 (!) days of depositions neither expert was asked a single question on the issue of whether Adrenalin was an unpatentable product of nature. Perhaps most significantly, Latimer was not mentioned in a single brief, and Learned Hand (who was less than two years removed from a Wall Street law practice when he wrote his Parke-Davis opinion) seems to have been completely unaware of Latimer—as is implied by Hand's blanket assertion that there was "no rule" against patenting "an extracted [natural] product without change."
Hand's dicta from Parke-Davis essentially lay dormant until 1958, when it was relied upon by Fourth Circuit judges grappling with the patentability of vitamin B12. Merck & Co. v. Olin Mathieson Chemical Corp., 253 F.2d 156 (4th Cir. 1958). By 1958, Learned Hand had, of course, become a living legal legend. His judicial colleagues did not recognize that 47 years earlier, a 39-year-old district court judge had made an under-informed mistake in Parke-Davis. In the years since 1958, Hand's Parke-Davis pronouncements have ascended from obscurity to conventional wisdom.
The major policy point of my article is that those concerned with patent law should no longer view Learned Hand's product-of-nature language in Parke-Davis as flowing from the pen of a jurisprudential giant who had weighed vigorously debated points and counter-points on a challenging legal question. In reality, what we have are poorly informed musings of a young district court judge grappling with one of his first patent cases. If the Federal Circuit (or, later, the Supreme Court—or even Congress) should decide that granting patents on isolated sections of DNA is legitimate, this would not change the historical reality that Learned Hand misstated the law as it existed in 1911. We might, however, need to reclassify his error as a lucky mistake.
simple, " had seen your paper case. It is inapposite to the discusion at hand."
Ex Parte Latimer relied on exactly two Supreme Court cases, Cochrane and the Wood Paper Patent case. Cochrane relied on the Wood Paper Patent Case, making that case the more important.
Neither one supports a product of nature exclusion even thought the Commissioner in Latimer said they did. In both cases, the claimed product was old, albeit produced by a different process. In Latimer, the claimed product was not really new either, as the cellulose strands similar to the claimed strand, were produced by a process of extraction, but from a different plant. The only difference here was the choice of plant, where the one plant produced better strands, but not different in kind. The product was not new under Wood Paper.
However, the basis for the decision of the Commissioner relied on a product of nature exclusion that he said was found in the two Supreme Court cases. In this, he was wrong.
These two case are not inapposite at all to the present discussion because they were cases relied upon by the Commissioner and they do not support his reasoning.
I had seen your paper case. It is inapposite to the discusion at hand. It does not support your thesis that In re Latimer incorrrectly applied previous Supreme Court decisions.
I thought you had something more, something on point.
simple, try this post for starters:
link to patentlyo.com
10:34am May 30
The two cases are the Wood Paper Case link to scholar.google.com
and Cochrane v. Badische link to scholar.google.com.
In both, the prior art composition was known. In the Wood Paper Case, the Supreme Court said that to be patentable, the claimed cellulose compound would have to be more than a purer version than the known cellulose compound. Cellulose itself would have to be unknown. But it was known, and was in use. Thus the claim failed over the prior art known cellulose, not a product of nature exception.
“There are many things well known and valuable in medicine or in the arts which may be extracted from divers substances. But the extract is the same, no matter from what it has been taken. A process to obtain it from a subject from which it has never been taken may be the creature of invention, 594*594 but the thing itself when obtained cannot be called a new manufacture. It may have been in existence and in common use before the new means of obtaining it was invented, and possibly before it was known that it could be extracted from the subject to which the new process is applied. Thus, if one should discover a mode or contrive a process by which prussic acid could be obtained from a subject in which it is not now known to exist, he might have a patent for his process, but not for prussic acid. If, then, the Watt & Burgess patent for a product is sustainable it must be because the product claimed, namely, “a pulp suitable for the manufacture of paper, made from wood or other vegetable substances,” was unknown prior to their alleged invention. But we think it is shown satisfactorily that it had been produced and used in the manufacture of paper long before 1853, the year in which the original patent of Watt & Burgess was dated.
It is insisted, however, that the paper-pulp which had been produced before the invention of Watt & Burgess was not pure cellulose, that it was only approximately pure, and from this it is argued that the pure article obtained from wood by their process is a different and new product, or manufacture. Whether a slight difference in the degree of purity of an article produced by several processes justifies denominating the products different manufactures, so that different patents may be obtained for each, may well be doubted, and it is not necessary to decide. The product of the complainants’ patent is a pulp suitable for the manufacture of paper, and, confessedly, to make white paper it requires bleaching. The pulp which had been obtained by others from rags in large quantities, and from straw, wood, and other vegetable substances to a lesser extent, was undeniably also cellulose, suitable for manufacturing paper, and, so far as appears, equally suitable. The substance of the products, therefore, was the same, and so were their uses. The design and the end of their production was the same, no matter how or from what they were produced.
“What had been done before the Watt & Burgess invention was more than partially successful experimenting. A product or a manufacture had been obtained and had been used in the arts, a manufacture which was the same in kind and in substance, and fitted for the same uses as the article of which the complainants now claim a monopoly. That this manufacture may have been the product of one or more different processes is, as we have said, quite immaterial in considering the question whether it is the same as that produced by the complainants.
It has been, however, argued that the product of the complainants’ process and the product claimed as a new manufacture is cellulose, of the proper consistency and dimensions, and with a fibre of a proper length for immediate felting into paper, while the cellulose obtained from rags or wood, or other vegetable substances, by other processes than that of the Watt & Burgess patent, had a longer fibre, and required, in addition to chemical agency, mechanical treatment to prepare it for use in paper making. Hence, it is inferred the product is a different one, that it is properly denominated a new manufacture, and that it was patentable as such.
This argument rests upon a comparison of the finished product of the complainants with an article in an intermediate stage, and while undergoing treatment preparatory to its completion. It may be quite true that at some stage of its preparation the paper-pulp made and used before 1853 was not of the proper consistency for paper making, or that 596*596 its fibre was too long, and that it required additional manipulation to fit it for use. But when it had received that treatment, its fibres were reduced to the proper length, and it became capable of all the uses to which it is claimed the product of the complainants is adapted. It is with the finished article that the comparison must be made, and, being thus made, we are of opinion that no substantial difference is discoverable.
It may be that if the cellulose which had been produced prior to 1853, of such form and with such properties that it could be at once felted into paper, had been only a chemical preparation in the laboratory or museum of scientific men, and had not been introduced to the public, the Watt & Burgess product might have been patented as a new manufacture. Such appears to be the doctrine asserted in some English cases, and particularly in Young v. Fernie.[*] In that case, Vice-Chancellor Stuart remarked upon a distinction between the discoveries of a merely scientific chemist, and of a practical manufacturer who invents the means of producing in abundance, suitable for economical and commercial purposes, that which previously existed as a beautiful item in the cabinets of men of science. “What the law looks to,” said he, “is the inventor and discoverer who finds out and introduces a manufacture which supplies the market for useful and economical purposes with an article which was previously little more than the ornament of a museum.” But this is no such case. Paper-pulp obtained from various vegetable substances was in common use before the original patent was granted to Watt & Burgess, and whatever may be said of their process for obtaining it, the product was in no sense new. The reissued patent, No. 1448, is, therefore, void for want of novelty in the manufacture patented.”
Wow. MM, you have kooky self-interested views on patents (isolation patents good, all software bad), but I didn’t think you were a bigot.
Joe
I would search, but I have nothing to search for.
Do you at least have the names of these earlier Supreme Court cases that in re Latimer supposedly interprets incorrectly?
Also, you have not addressed my question concerning the fact that Chakrabarty is law. Why is that?
Perhaps, Simple, I don't know who you are. I have answered the question within the last week on this forum to one of you no names folks. I you look, you will find.
And, no, I will not repeat my detailed analysis again.
“which had incorrectly interpreted two prior Supreme Court cases to create the exception.”
Are you sure? Why? I have seen no rationale offered indicating that Supreme Court cases were incorrectly interpreted. I have seen nothing to say that In re Latimer was wrong, let alone conclusively wrong.
I find it more convincing that the Court need not have found the Chakrabarty case to be one of one particular designation or not because the exceptions apply to all the designations (the Court seems to be wary of draftsmen’s talents). Don’t you think this rather eviscerates your line of logic? It certainly comports with each of the modern era Supreme Court cases.
I think I would find your position more compelling if you could establish some link to a time-aspect in any of the other judicial exceptions. Again, the uniformity of the law in regards to the exceptions does not favor your position. Your not addressing this is a weakness.
Further, Chakrabarty is law, so even if the chain of events leading up to that law is somewhat faulty, the law still stands. That’s why I asked “Why the continued emphasis on ‘prior to’ for the Chakrabarty case?” The exception is clear. That exception does not carry an exception to the exception for time of discovery.
Why would you expect someone to find your case compelling?
simple, because, in the end, the Supreme Court did not hold the bacteria unpatentable as a product of nature. In fact, the Court traced the doctrine to Ex Parte Latimer, PTO commissioner's opinion that I previously discussed, which had incorrectly interpreted two prior Supreme Court cases to create the exception. The doctrine itself has never been validated by any court. It exists only because the PTO thinks it exists.
From Chakrabarty;
"We reject this argument. Prior to 1930, two factors were thought to remove plants from patent protection. The first was the belief that plants, even those artificially bred, were products of nature for purposes of the patent law. This position appears to have derived from the decision of the Patent Office in Ex parte Latimer, 1889 Dec. Com. Pat. 123, in which a patent claim for fiber found in the needle of thePinus australis was rejected. The Commissioner reasoned that a contrary result would permit "patents [to] be obtained upon the trees of the forest and the plants of the earth, which of course would be unreasonable and impossible." Id., at 126. TheLatimer case, it seems, came to "se[t] forth the general stand taken in these matters" that plants were natural products not subject to patent protection. Thorne, Relation of Patent Law to Natural Products, 6 J. Pat. Off. Soc. 23, 24 312*312(1923).[8]"
Why the continued emphasis on “prior to’ for the Chakrabarty case?
“It seems clear to me that there is no products of nature exception.‘
You see what you want to see. And only what you want to see.
Enjoy your “little bit of pregnancy.”
Just to be clear, prior to Chakrabarty, there was no judicial exception to that held that products of nature cannot be patented. That was the conclusion of the patent office in ex parte Latimer, where the Commissioner analyzed to prior Supreme Court precedents and misunderstood both of them. In an earlier post I provided extensive quotations from both cases. In both cases the Supreme Court relied on the fact that the prior art product was known. In the Wood Paper Case, the Supreme Court went on to say that to be patentable, the cellulose being claimed could not be just a purer form of the known cellulose, it would have to be something that was not known. They would not have said this had the cellulose itself been excluded from patentability because it was a product of nature. Rather than exclude cellulose from patentability because of his product of nature, they stated that cellulose would've been patentable regardless of it being a product of nature if cellulose had been unknown.
This supports my thesis, that the Supreme Court did not have a product of nature exclusion until Chakrabarty. Rather it was the patent office had such an exclusion and it was based upon a misinterpretation of two Supreme Court cases, both of which cases in fact relied upon the fact that the product of nature forming the basis the prior art in the particular cases were both known to hold claims in those cases unpatentable on the basis of prior art.
Back to power.
It seems that the Supreme Court has suggested in Golan that Congress had the power to withdraw from public domain information that had long been in the public domain. At least that is one interpretation of the passage I quoted. If so, Congress has the power, per Golan, to authorize patents on products of nature.
If this is true, we must note that Congress has already, from the founding of this nation, authorized patents on discoveries of new compositions of matter; and it has not provided in the statutory framework any exceptions based upon products of nature. It seems clear to me that there is no products of nature exception.
There is a prior art exception however based upon the statutory framework. But prior art is based upon prior knowledge of the product of nature. It always has been.
Therefore if one discovers a new composition of matter hitherto unknown he may obtain a patent for it regardless that may be found in nature.
“but even in Chakrabarty the statement was dicta because there was no composition of matter issue squarely before the Supreme Court.”
Your understanding of dicta and holding is pathetic. If you don’t like something, you decide it is dicta and you don’t have to follow it. If you like something, you elevate it to a holding and make it law.
Stop running from Chakrabarty. You said you were not questioning the correctness, and yet you L I E and constantly question its correctness.
It is clear from the case that the Court did not have to decide whether that invention was classified in one category or another because ALL categories have to abide by their judicial exception that those things (earlier discovered OR NOT) in the warehouse of nature belong to all men and are thus not patent eligible. The FACT is that it does not make a difference which category Chakrabarty’s invention fell into. The HOLDING of the case applies to all categories. Long has the Court warned against narrow applications of its holdings, lest the artful drafter avoid the spirit by engaging in the letter. Your premise lies along a fallacy foreseen by the Court and expressly nullified.
I have never seen anyone try so hard to avoid the plain meaning of actual law.
It’s time to look down at that pregnancy test strip. Are you pregnant Ned, or are you not? No halfways here, no pick and chose. Which is it?
Decide.
“and should in all fairness receive some compensation for their efforts. This is provided by the patent system in the United States.”
Except it is not.
The same exact rationale can be applied to any of the judicial exceptions. Why do you insist on being a little bit pregnant by picking and choosing amongst the judicial exceptions?
You keep on evading answering the question put to you Ned.
Can we see an answer please?
To repeat A Dark Light’s post:
Your exploration sounds exactly in what A New Light posted.
Are you trying to make distinctions with the judicial exceptions where there are none, or are you trying to tie the exceptions to Judge-made law; versus tied to the constitution?
How do you understand the judicial exceptions to be? Are they common-law additions to the words of Congress, or are they interpretations of the limits of the constitutional grant?
If interpretations, you must accept them all, including Chakrabarty.
If additions, then do they violate the constitutional separation of powers as is being suggested?
“no effective remedy to force a trade secret holder to disclose his trade secret”
Doesn’t that beg the question of should there be? You really should pull yur head out of the ground and look around once in awhile. The AIA just signed into law promotes trade secrets with its PUR provisions.
You type as if you said something impressive.
You haven’t.
Paper is not an article of nature.
Windbag.
Chaka, I have posted the Cochrane decision here at on Patently O numbers of times. It stands for the proposition that one cannot patent a known composition of matter by labeling it "artificial" thereby somehow limiting it to the process of making it:
"[T]he article produced by the process described was the alizarine of madder, having the chemical formula C14H8O4. It was an old article. While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time, in contradistinction to being eliminated from the madder root. Calling it artificial alizarine did not make it a new composition of matter.
Would paper patent is the same effect:
"If, then, the Watt & Burgess patent for a product is sustainable it must be because the product claimed, namely, "a pulp suitable for the manufacture of paper, made from wood or other vegetable substances," was unknown prior to their alleged invention. But we think it is shown satisfactorily that it had been produced and used in the manufacture of paper long before 1853, the year in which the original patent of Watt & Burgess was dated.
It is insisted, however, that the paper-pulp which had been produced before the invention of Watt & Burgess was not pure cellulose, that it was only approximately pure, and from this it is argued that the pure article obtained from wood by their process is a different and new product, or manufacture. Whether a slight difference in the degree of purity of an article produced by several processes justifies denominating the products different manufactures, so that different patents may be obtained for each, may well be doubted, and it is not necessary to decide. The product of the complainants' patent is a pulp suitable for the manufacture of paper, and, confessedly, to make white paper it requires bleaching. The pulp which had been obtained by others from rags in large quantities, and from straw, wood, and other vegetable substances to a lesser extent, was undeniably also cellulose, suitable for manufacturing paper, and, so far as appears, equally suitable. The substance of the products, therefore, was the same, and so were their uses. The design and the end of their production was the same, no matter how or from what they were produced."
Dark, I was pointing out that there was no effective remedy to force a trade secret holder to disclose his trade secret. This is an important point to the overall point I was making in that if we deny patent protection to discovered compositions of matter found in nature by the discoverer, that discoverer was simply keep the composition secret and instead of revealing composition to the public and its effective use, will instead provide a service.
Imagine had the inventors of the Myriad patents chose the trade secret router of protection. So long as they maintained the identity of the BRCA genes secret, they could've provided a service to the public that no one else could have provided. How long they could maintain this information secret, no one knows. But even to this day, no one knows the secret of Coke.
The point of the patent system is to incentivize disclosure through the temporary exclusivity provided by patent. Under any fair consideration of the trade-off between trade secrets and patents when considering the BRCA situation, it should be noted that the discovers of the gene disclose the information to the public and should in all fairness receive some compensation for their efforts. This is provided by the patent system in the United States.
Why don’t you read In re Latimer and follow the SC decision listed there?
“prior to Chakrabarty,”
Why are you still trying to avoid what is plain as day?
Still think you can be a little bit pregnant? Still think you can pick and choose amongst the SC decisions? Your selectiveness is telling, and it is not a tale of happiness for the Ned Heller Crusade.
Truly pathetic.
sar·casm (särkzm)
n.
1. A cutting, often ironic remark intended to wound.
2. A form of wit that is marked by the use of sarcastic language and is intended to make its victim the butt of contempt or ridicule.
[Late Latin sarcasmus, from Greek sarkasmos, from sarkazein, to bite the lips in rage, from sarx, sark-, flesh.]
Ned, your remarks were not sarcastic, as there was no bite, no irony, and certainly no wit.
You introduce a tangeant thought about something not even being discussed and draw a new and quite befuddled tie to constitutional law. The notion of “forcing” is completely untethered.
The only one your wound is yourself. The only one who deserves contempt and ridicule is you.
Chakra, Your last post amounts to legal nonsense and goalpost shifting. While it is true that a holding in one case might be extended to similar facts in a subsequent case, prior to Chakrabarty, no Supreme Court case had ever held or suggested that a composition of matter found in nature was not eligible for patenting. All prior Supreme Court cases on the patentable subject matter exceptions had addressed themselves to "laws of nature," or principles in the abstract. Not a single case that I'm aware of had ever suggested that simply being found in nature by itself was sufficient to render the claim invalid.
As we can see, at the time of ex parte Latimer (1889), the case identified by the opening post here, the Commissioner, not the Supreme Court, held that the prior Supreme Court precedents could be read to provide a product-of-nature exclusion. But that was was the patent office and not the courts. There in fact was no Supreme Court precedent until Chakrabarty that agreed with the principle, but even in Chakrabarty the statement was dicta because there was no composition of matter issue squarely before the Supreme Court. The court held that the claimed bacteria were not products of nature.
“I searched in vain for”
Wow, talk about accusing others of what you do, silly Ned. This is one colossal goal post moving because you were asked to provide a pincite to your naked assertion at May 27, 2012 at 12:11 PM
“However, the same case seem to suggest that Congress could not do that in the case of patents.”
Anon bslapped you into next week by noting your lack of professionalism, providing a pincite that proves the opposite of what you were trying to twist out of the law, and you still have not answered the original call for a pincite to back up your L I E S.
If you are a lawyer, you should probably quit that day jon. You are not very good at it.
“The onus is on you and you have not delivered”
Silly Ned has not delivered because silly Ned cannoy deliver.
He squirms and demands case law to prove “not” his point when the silly little man forgets that he need sto provide case law to prove his point.
“now you make distinctions between territorial waters and oceans”
It is a rather important distinction, one very much on point and not a movement of goalposts.
The point that is lost is the silly man Ned’s.
“has held a claim ‘
Silly Ned, the holding of law is not limited to the very facts of a single case, for if it were, then the law would not exist outside any case, and all law would need to be adjudicated in the courts for each and every matter.
Either you are pregnant, or you are not. Which is it, silly Ned?
Chakra, "Compositions of matter, found in nature, are not patent eligible as they belong to the warehouse of men. That is the law as put forth by the Supreme Court."
Law?
Dicta?
The test is whether the Supreme Court has held a claim to a composition of matter ineligible on the basis that that it was found in nature.
Name that case.
“Compositions of matter are not knowledge.”
No one is saying otherwise, mister strawman.
However, both knowledge and compositions of matter are limited by Supreme Court Jurisprudence.
It must gall you so to fear the SC made law that you cling to in other regards.
As has been posted, you can not be a little bit pregnant. You must accept all of the SC limitations or none of them. Compositions of matter, found in nature, are not patent eligible as they belong to the warehouse of men. That is the law as put forth by the Supreme Court. If you want soemthing different, contact your congressmen.
That’s the way it is. That’s the total way it is. The SC simply does not permit you to be a little bit pregnant and award patents to the mere first discoverer of something in the warehouse that belongs to all.
Dark Mind, Availability and knowledge are two different things:
Agreed.
So, Golan held that Graham’s dicta was only that knowledge cannot be withdrawn by patents. This certainly provide no direct support for any theory that congrees cannot authorize patents on compositions of matter found in the public domain by a discoverer, but where the compostions are not known.
I think we agree on this.
As to Prometheus, the point of the book was that the correlations, once discovered, could be published, and were in fact published in the patent. Once they are published, they are information. Simply knowing that information cannot be made an infringement.
Compositions of matter are not knowledge.
King, now you make distinctions between territorial waters and oceans. Mein Gott, look how far you will move the goalposts to avoid losing a point.
Darkness, don't undestand sarcasm, do we?
The simple retort is that availability and knowledge of that availability are two very separate things.
Mere discovery simply is not enough. That’s the knowledge side. Once known, as in, available to read it in a book, this is not enough. Material available only means material in nature. You cannot lock down what is on nature no matter when the usefulness, even the presence of what is in mature is discovered. There is what can only be labeled purposeful misunderstanding afoot.
Didn’t Ned use this same argument about mere knowledge in a book against patent eligibility in Prometheus? And yet that’s what he effectively wants to do by giving nature’s material away to a first discoverer.
There are so many things so wrong with this post, I scarcely know where to begin.
Constitutional question about keeping a secret??? Forcing someone to share secrets???
This is pure madness, rambling unintelligence run amuck.
anon, I searched in vain for the word "nature" in Golan. I could not find it.
The following, from page 887 is the closest the Court comes to discussing the limit on Congress's power vis-a-vis the public domain:
"
Pointing to dictum in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), petitioners would have us look past this history. In Graham, we stated that "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available." Id., at 6, 86 S.Ct. 684; post, at 907. But as we explained in Eldred, this passage did not speak to the constitutional limits on Congress' copyright and patent authority. Rather, it "addressed an invention's very eligibility for patent protection." 537 U.S., at 202, n. 7, 123 S.Ct. 769."
The clause speaks about "existing knowledge" and "materials already available." If a composition of matter is not known and is not available, I take this passage as implicit authority for congress power to protect it.
Ned, you confuse the facts of the case with the larger holding that actually does fit into the Supreme Court exceptions.
You still conjure this temporal clause out of nothing.
You still fail to address how nature’s warehouse is time dependant. You need law to make this jump, not an absence of law preventing such.
The onus is on you and you have not delivered.
A Dark Light,
See my posts infra. I believe that the Court making their exceptions as law may indeed fit into the traditional common law sense of power which can be deemed a constitutional violation.
Further, I believe that the rationale offered of constraining promotion in the arts is unsupported and conclusionary conjecture.
If, as the great Abraham Lincoln has said, if we provide the fuel of interest to man’s hunt for a better understanding of the laws of nature, there would have been more – not less – likelihood that innovators would apply their toil earlier to unlock and describe those laws. Einstein may have been beaten much, much earlier (and quite possibly earlier than any temporary patent rights would have been in force, with a clear net gain to society in the promotion of the useful arts).
Yes, those laws of nature would be subject to the terms and conditions of patent rights, specifically, they would enjoy exclusivity, but that exclusivity would be for a limited time and even during that limited time would not prevent oters from building on those ideas, or employing them in pure scholarly efforts – as is not prevented today. The danger is not only conjecture, it is overblown conjecture.
Look, Hand had "prior art" to deal with as well. The holding of "kind" is consistent with the standard of "invention" at that time. Cf, Eibel Process: difference in "kind" no degree.
This is not authority that the claimed compound must be different in kind over the inventor's own novel discovery of a composition found in nature. Why, because those were not the facts in the case!
Ned,
I have read the case, the article and the backup material – including underlying Supreme Court cases. The article is somewhat flawed and your stand which is being questioned in the instant comments is clearly incorrect as the Learned Hand case HOLDING is clear and it does not suit your cause.
You have created a temporal aspect to a Supreme Court exception which simply does not exist.
I fear that you have simply accepted without legal justification the repeated – and rather empty and baseless – claim by Malcolm that prior to the general announcement to the world at large, items in nature’s warehouse can be patented for the item itself, with patent rights going to the discoverer of the item. There simply is ZERO legal basis for this selective notion of taking out of the warehouse of men per the accepted judicial exceptions. It is something both you and Malcolm wish were law, but your wishes just do not make it so.
Ned,
Please maintain your professionalism and provide the pincite. You make a claim to a very specific statement of law in a rather long and detailed case.
For example, the exact opposite of what you claim is indicated in the Golan case at 132 US, 873 at 886 (various examples of patents having material taken from the public in various situations in direct analogy to what the court is doing in the case of copyrights – treatment equal and definitely not “same case seem to suggest that Congress could not do that in the case of patents“).
It does not suit your cause in your ongoing battle with Actual Inventor et al when you make statements as to law, get called on them, fail to follow through with appropriate backing, and then I find the exact opposite upon review.
How can any antagonist – much less any lawyer – take anything you have to say as believable when you engage in this type of behavior?
No, you have some nerve.
Let us terminate this discussion now as you have nothing to add except unsupported, conclusory statements.
And, I invite you to actually read the case.
You don’t address my point at all, get stuck on the case dicta, ignore the actual holding and then get all high and mighty about support for posts when you are busy making things up whole cloth.
You have some nerve.
Are you a lawyer? You provided the citation. Your did not provide the requested pincite.
Ha right back! Do you know the difference between territorial waters and the actual oceans?
Obviously NOT.
“liberating it from the substratum of existing matter.”
The “substratum of existing matter? Really?
What a bunch of armchair physicists up ins of our PO.
“a free Higgs boson.”
Which higgs bosons are not free? Presupposing that they exist of course.
Ha! Have you ever heard of offshore drilling?
Stop, it is you do not have a clue. Read the lead article here. Read the case. Read the history of the development of adrenaline.
A prior inventor had extracted adrenaline and knew of its therapeutic value. However, he did not know how to isolate or purifying the hormone from the surrounding material. The inventors of the patent at issue used a method they had developed in Japan to provide key purification step. That was what they filed a patent application on and that is what was granted but only after asserting to the examiner that the claimed purified compound was chemically different.
What Learned Hand had before him was a case where the difference between the prior art in the claim at issue was not about the hormone adrenaline. It is rather about whether the purified form was different from the extracted form. There was no issue in the case that the purified form was unpatentable because it was a product of nature. The lead article makes that clear.
If you continue to assert that facts are different from the above or that the issues are different from the above, it is incumbent upon you to provide at least your summary of the facts, and provide specific quotes from the case that support your view. You cannot continue to say that others are wrong in face of their support of their positions with citations to authority, and historical evidence.
Golan v. Holder, 132 S. Ct. 873 – Supreme Court 2012
http://scholar.google.com/scholar_case?case=3239612723066820072&q=Golan&hl=en&as_sdt=2003
“just one more point here, Judge Learned Hand was not ruling that one had to have a difference in “kind” to define over a composition of matter found in nature”
WRONG.
That’s exactly what he was holding. For some odd reason, there is a train(wreck) thought going around that things of natuer somehow change their “warehouse to all men” status depending on timing of discovery.
There is NO basis in law for this temporal insertion. NONE
Further to the pincite, you do realize that it is the same constitutional clause that grants the Congress power over copyright and patents, and if the Court does divide the clause, that would be strictly unconstitutional, do you not?
“and grant property rights in specific areas of the ocean.”
Really? The US owns the oceans of the world?
That’s going to come as a shock to a great number of people.
“However, the same case seem to suggest that Congress could not do that in the case of patents.”
Pincite please.
A Dark Light, constitutional or statutory? That is the question.
The recent Golan decision suggest two things: that Congress can withdraw subject matter from the public domain and award property rights in it to one person when copyright is involved. However, the same case seem to suggest that Congress could not do that in the case of patents. The combination seems to suggest that there is a constitutional problem with respect to claiming monopolies in things of nature.
Do you agree?
Also consider that Congress routinely awards property rights in real property, and real property obviously is a thing of nature. Further, Congress assumes jurisdiction over the oceans, and grant property rights in specific areas of the ocean.
Why is there a difference then in patents? Why is it that Congress cannot withdraw from the public domain in grant to one person a monopoly in a composition of matter found in nature?
If there is any constitutional basis for denying Congress this power, it has to be that the Court does not believe that Article I, §8, grants Congress that power. But if not, why not?
Your exploration sounds exactly in what A New Light posted.
Are you trying to make distinctions with the judicial exceptions where there are none, or are you trying to tie the exceptions to Judge-made law; versus tied to the constitution?
How do you understand the judicial exceptions to be? Are they common-law additions to the words of Congress, or are they interpretations of the limits of the constitutional grant?
If interpretations, you must accept them all, including Chakrabarty.
If additions, then do they violate the constitutional separation of powers as is being suggested?
A Dark, just one more point here, Judge Learned Hand was not ruling that one had to have a difference in “kind” to define over a composition of matter found in nature. Judge Learned Hand was rather ruling that one had to have a difference in “kind” over a “known” extracted adrenaline hormone already in use for the patented purpose. In other words, even to grant the patent on purified adrenaline, Hand had to find that the purified adrenaline was an invention in view of the known adrenaline. Thus he had the rule that the purified adrenaline was different kind in view of the prior art extracted adrenaline.
The situation I am talking about is different in that the claimed composition is new, entirely new. No one “knew,” before the discovery by the applicant or patent owner, of the composition or of its utility. Both were brought to the public by the discoverer.
Now let us assume that one cannot categorically patent such compositions of matter. If one were to disclose the chemical composition the public, others could make and sell the chemical composition in competition. The private remedy in such a situation is for the discoverer to keep this discovery secret.
Would you propose that it would be constitutional for the first discoverer to keep the chemical composition secret? Instead of disclosing the composition to the public, discoverer could provide a private service whereby composition could be maintained in secrecy?
No if you would say that keeping the composition a trade secret be unconstitutional, exactly what former remedy do you propose to force the trade secret owner to disclose the secret composition to the public?
A Dark Light: “The key is “effectively” and the notion that one cannot give a patent to something that belongs to all men.”
“Cannot.”
Let’s explore this for a moment.
Is it your position that Congress is beyond the power of authorizing patents on compositions of matter found in nature?
Or, is it your position that Congress has his power, but that the courts have recognized an exception such that their interpretation of the statutes that Congress has authorized do not extend the compositions of matter found in nature?
The PTO has been known to make some errors. That’s just one of them.
…to be more precise, the Higgs boson either exists and will be revealed through experiments as existing, or it doesn’t, which remains a possibility. When found, however, it won’t be man-made, nor a creation of man worthy, for instance, or patent. It is a product of nature.
not true, the Higgs boson exists, but tremendous energies are required to reveal its existence, liberating it from the substratum of existing matter. Unless you think distant galaxies didn’t exist before telescopes were built to detect them, and thus were created by high powered telescopes. You’re venturing off into postmodernism. Seriously, you think Higgs bosons don’t exist until we create them in particle accelerators? Anthropocentrism at its best (or worst).
well, I have read those and those discussions make some nice rhetorical turns, but the fact remains that the string covered in the claims is identical to the nucleotide string found in nature.
One only has to look at the wild success of the Congresional Bayh–Dole Act to see that innovation – and pure research – would be fostered, and not constrained if such were allowed to enter the patent gate (the Court’s possibly ultra vires patent gate).
I would integrate A Lincoln’s comment and posit that instead of constraining innovation, the actual mechanism would advance innovation by providing the “fuel of interest” to pure scientific research, which research, lacking that fuel, has been forced to be the handmaiden of special interests of commerce and (poorly and inconsistently managed) government handouts.
In fact, with situations involving agencies, Congress at times seems more interested in offloading its power – witness the power offload on setting fees given to the executive branch in the AIA.
I think it is an interesting idea that the constitution forbids the traditional court power of making law through the common law power by expressly providing that Congress have the authority of creating patent law. The constitution does not provide that the judiciary have any authority to create any judicial exceptions, and the rationale often given, that such exceptions are necessary because otherwise innovation MAY be stymied is conjecture at best, and unknowable at least.
Granted, if something egregious happens, then there are examples of the Congress in action “over-ruling” the Court through legislation (in fact, while mostly codification, the 1952 act expressly sought to overrule an activist Court and the Flash of Genius mindset).
However, the slower erosion of power and the undue influence of the Court making rulings that are not constitutional in nature, and are more in line with traditional law making in the common law sense are too subtle to be checked by a Congress that seems at times more interested in lining their pockets than being a watchdog for the separation of powers.
In pieces, as the filter is active this morning:
A New Light’s premise is interesting. The constitution does indeed provide the power to the Congress and not to the Supreme Court, and yet it is the Court that is shaping – and effectively writing – law in spirit, if not in letter.
I do not think that Congress is an effective watchdog on the Court’s power.
I’ll gladly compare my substance to anyone’s, any day. You would see that few match it, and certainly not Malcolm or 6 or their various psedunyms (like S.R. Chasm).
anon,
I thank you for adding a level of substance to the threads.
“Okay, that’s a lie. You caught me.”
Happens quite often. Just not how you picture it.
The key is “effectively” and the notion that one cannot give a patent to something that belongs to all men.
You say no case law prior to Chakrabarty and you would be very wrong. Any SC case dealing with the “warehouses” of nature belonging to all men sound in this position.
Further, your sounding out Chakrabarty is quite frankly disingenuous. You say that you are not saying the Supremes were wrong, but your constant callouts of that particular decision say otherwise.
If you call out Chakrabarty, you might as well call out EVERY SC decision that adds an exception to what Congress has said in plain terms. That puts you directly in A New Light’s camp. On this, you cannot be “just a little bit pregnant” and pick and choose which SC decisions you like and which you do not. If you like any of them, you must accept all of them. There is no middle ground.
A Dark, why do you believe compositions of matter found in nature by the disoverer are not patentable if you do not claim the wild form, but a modified form, so that the modified form claims is a product of man? I see nothing at all in the constitution, the statutes, or ANY case law prior to Chakrabarty to that would suggest that one cannot patent such things.
Your formulation of “kind” implies that the wild form is prior art to the first discoverer. What basis is there in the law for that proposition?
Laws of nature are not processes.
However, compositions found in nature are compositions.
“Element 95 was “presupposed” by the periodic table.”
I (pre)suppose that didn’t stop anyone from getting a patent on it.
“In contrast, isolating or purifying is an act of man, and can reasonably be considered a making.”
No Ned, and for good reason. If the isolating or purifying does not change what is in nature, in kind, then you are, to borrow a Malcolm word, EFFECTIVELY patenting the natural item itself.
Learned Hand was correct. The isolating or purifying must induce a change in kind.
Also keep in mind what Breyer noted in Prometheus: there a process in the future could be invented to even wipe out the blood transformation. So, in a parallel way, discoveries of things in nature in the future can also wipe out man’s current efforts (Malcolm’s fruit fly example is burnt to a crisp by the Prometheun fire).
It does look like he celebrated that 9-0 decision a bit too early.
“There is absolutely nothing in the constitution or statutes that suggests that discoveries of compositions of matter found in nature cannot be patented… I am not suggesting here that the Supreme Court was wrong.”
BS
That’s exactly what you are doing. You sound like your friend A New Light.
link to wragge.com
Ned, Malcolm, here is a link to a compact comment on the English escitalopram case, where the supreme court reversed the lower court on the issue whether the claim to the enantiomer was obvious: no, because there was no obvious way to isolate the claimed enantiomer. The case was recent but perhaps the claims fall to be judged on a date 20 years ago.
Dr. Harkness misses a critical point.
It has never been about isolation alone. It still isn’t.
In this Learned Hand was correct: the act of isolating must create something new in kind. This concept predates and underlies the still true concepts that animate the reasoning that is being attempted to be tarnished.
“The string claimed in the Myriad patent has not been transformed from the string as it occurs in nature”
That’s not true. See PatentDocs for several indepth illustrations.
“ it’s because what you’re looking for doesn’t exist”
Lolz.
Try again.
“ting monopolies over the domain of science carries the clear danger of impeding scientific discovery upstream.”
Or carries with it the same fuel of interest for innovation and promotion of progress.
Your battlecry would have a little more impact if you stopped hiking up your skirt and running away when you are asked to square that decision with the precedents it says that it is relying on, and then goes on to violate.
Maybe you and Hans Blix can get together and actually address real law issues.
lol.
As stated by Take Your Pick on link to patentlyo.com :
“Credibility and positions taken on this thread have no correlation to the 9-0 decision and anyone postulating otherwise is either incompetent or dishonest.”
In MM’s case, it might be both.
Discoveries of …compositions of matter
The Constitution isn’t so specific about what types of discoveries are eligible, and section 101 would seem to protect all statutory classes equally – if discoveries of compositions of matter are eligible, so should discoveries of processes be eligible.
And what else can be “discovered” (as opposed to invented) but that which already exists in nature?
Why, then, did Prometheus not go the other way?
Discoveries of …compositions of matter is what has been the law since 1793.
Sent from iPhone