Guest post by Jeffrey A. Lefstin, Professor, University of California, Hastings College of Law, and Peter S. Menell, Professor, University of California, at Berkeley School of Law. Professors Lefstin and Menell recently filed an amicus brief in support of Sequenom’s petition for certiorari.
The Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) triggered the most radical redefinition of patent-eligible subject matter in U.S. history by engrafting onto § 101 an ‘inventive application’ requirement for patenting practical applications of scientific discoveries. In Ariosa v. Sequenom (2015), the Federal Circuit held that under Mayo, a diagnostic process based on the discovery of cell-free fetal DNA in the maternal bloodstream was not patent-eligible under § 101, because the steps of amplifying and detecting DNA were conventional at the time the invention was made. Now that Sequenom has filed its petition for certiorari, the Supreme Court has the opportunity to revisit its holding in Mayo that discoveries are not patent-eligible unless inventively applied.
The decision in Mayo came as a shock to patent practitioners and the inventive community. How could the Supreme Court overlook the clear language running throughout the history of patent law authorizing patent protection for inventions and discoveries? Why would the Court turn away from the long tradition holding that practical application, not inventive application, suffices to render a discovery patent-eligible?
As we have discovered, highly pertinent material in the patent statutes, legislative history, and jurisprudence was never presented to the Mayo Court. The result is a deeply flawed decision that contradicts Congress’s patentability framework and misinterprets critical precedent.
The Mayo Court did not discuss the statutory basis for patent-eligibility of scientific discoveries. Instead, the Court revived Parker v. Flook (1978), which had been supplanted by Diamond v. Diehr (1981), to require that scientific discoveries be inventively applied to be patent-eligible. Mayo, like Flook, relies upon a single quotation from Neilson v. Harford, an 1841 English case—“We think the case must be considered as if the principle being well known”—to conclude that courts must treat scientific discoveries as part of the prior art in assessing the eligibility of applications of such discoveries. Therefore, unless the scientific discovery is inventively applied, the claim is ineligible for patent protection under § 101.
Unfortunately, many patent litigators – and many of the amicus briefs filed in Sequenom – have shied away from directly confronting the fundamental mistakes in the Mayo decision. They understandably fear that the Supreme Court will not be willing to acknowledge error. We hope otherwise. It is critically important that the Court be apprised of the proper basis – the clear text of the statute, legislative history, and the meaning and context of key cases – for interpreting patent eligibility.
Our brief filed in support of Sequenom’s petition makes three basic arguments:
First, the patent statutes have always defined inventions and discoveries to be patent-eligible subject matter. The very first patent statute, the Act of 1790, permitted patents for an “invention or discovery,” and every subsequent statute – the Acts of 1793, 1836, 1870, and 1952 – incorporated both “inventions” and “discoveries” into its text. Legislative history, such as the House and Senate Reports accompanying the Plant Patent Act of 1930, expresses Congress’s understanding that the patent laws have always applied “both to the acts of inventing and discovery.”
Furthermore, the intent to protect conventional applications of new discoveries was incorporated directly into § 101 of the 1952 Act. The legislative history of the Plant Patent Act shows that Congress defined routine and conventional applications of new discoveries as patent-eligible subject matter under § 101’s predecessor statute, R.S. § 4886. And the legislative history of the 1952 Act shows that Congress intended to carry forward that standard of patent-eligibility in § 101.
Even more significantly for Sequenom’s claims, the 1952 Act added a new definition of “process” in § 100(b), defining “process” to include “a new use of a known process, machine, manufacture, composition of matter, or material.” P.J. Federico, one of the chief drafters of the Act, explained that § 100(b) was intended to clarify that the new use of a known material in a known process was patent-eligible subject matter under § 101:
[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 a procedural standpoint and the novelty resides in the recitation of a particular substance, which is old as such, used in the process.
Section 100(b) removes any doubt that a process based on the discovery of a new property in a known substance is patent-eligible – even if the process merely recites conventional steps.
Second, Flook and Mayo’s grounding of the ‘inventive application’ requirement in Neilson v. Harford profoundly misinterprets that case. The Exchequer’s reference to treating Neilson’s discovery as “well known” was merely invoking an earlier case, Minter v. Wells (1834), to rule that Neilson had claimed a patentable application of his discovery – a machine – rather than an unpatentable abstract principle. Moreover, Mayo could not have been further from the truth when it claimed that Neilson’s patent was sustained because Neilson had applied his discovery in an inventive way. Neilson’s patent was sustained against an enablement challenge precisely because his means of application were routine, conventional, and well-known. In both English and American law, Neilson became the principal authority for the well-accepted proposition that specific and practical applications of discoveries were patentable, without any novelty or ‘invention’ in the means of application, provided that the patent supplied an enabling disclosure.
Third, a test of inventive application or undue preemption in § 101 disregards the framework established by Congress in the 1952 Act. The great advance of the 1952 Act was to differentiate the amorphous concepts of “invention” and “undue breadth” into the non-obviousness and disclosure requirements of §§ 103 and 112. Shoehorning an extra requirement for ‘inventiveness’ or lack of preemption into § 101 reverses those doctrinal innovations. The Supreme Court recognized as far back as O’Reilly v. Morse (1854) that disclosure, not subject matter, polices the patent bargain against unduly broad claims. That an inventor’s claim might practically preempt all use of a discovery will, as the Court said in The Telephone Cases (1888), “show more clearly the great importance of his discovery, but it will not invalidate his patent.”
Applying §§ 103 and 112 may require fact-intensive inquiries into the state of the prior art, the capabilities of skilled artisans, and the claim scope permissible based on the specification. But that is the structure prescribed by Congress under the 1952 Act. The judicial branch may not discard that statutory framework in favor of an “I-know-it-when-I-see- it” standard for patentability under § 101.
I’m not sure I see what the central point is here.
Is it that congress intended to protect some (but not all) discoveries? Everyone knew this already and the plain language of 35 USC 100 already establishes this.
Is it that the Court in Mayo improperly stated that there can’t be a patent on any discovery? Well they never said that either.
Is the argument that the inclusion of discovery was meant to eviscerate the “law of nature” and “natural phenomena” exceptions of 101? Hmmm…
To the extent the discovery is of something that exists, Congress did not intend to protect that which exists per se, but only applications of it.
Ok. Thanks. That makes more sense as the central thesis than the ideas that I floated.
Peter Menell: The brief reveals specific legislative history showing that Congress sought to use patent protection to reveal the “mysteries of nature.”
Two points here.
First, Peter, you have absolutely zero evidence that the system as it presently exists (including Prometheus v. Mayo and the CAFC’s decision in Sequenom) does not effectively promote progress in “revealing the mysteries of nature.” Those of us with research backgrounds — e.g., people who have made multitudinous discoveries using tools made for that purpose or using tools that we designed ourselves, and who continue to do so — understand that pushing the envelope to the outer bounds, as you seek to do, is counterproductive. From the perspective of patent lawyers and their clients and the academics who spend all their time sitting around tables commiserating with them, of course, it’s all about the money and how to grab that money with a minimum of effort. The best balance, in my opinion, is a system that promotes the development of new tools in a focused manner, and not a system that promotes patents that inevitably tie up the intended uses of enormously valuable tools (e.g., PCR as a method for detecting DNA) in a giant thicket of patent claims.
Second, the patent system implodes — and it already did implode once — when the gate are open as wide you appear to wish them to be. There is a balance that must be sought and I’m not seeing where you propose to draw the line. I am seeing the usual crying about how it’s Congress’ job to do this and that but Congress, as you know, consists of people represented by you and me. So what are you proposing to tell your Congressperson about where to draw the line if the Supreme Court agrees with you and says “Yes, you’re right: Congress did decide that every process is eligible for patenting, even if conventional detection tools, observable natural phenomenon and correlations are effectively taken out of the public domain because there’s a zillion claims telling you what you can look at and what you can’t.”
Where are you drawing the line, Peter and Jeffrey? What’s the statute going to say? Surely you’ve thought a lot about it. Right? Because if you haven’t thought a lot about it and you don’t have a clear answer then nobody should take you seriously.
The brief is about the Court’s role, which is limited to interpreting the statute faithfully. (I have long contended that the Constitution limits Congress’s patent power to the useful Arts — hence business methods are ineligible on legal and policy grounds: see, e.g., Forty Years of Wondering in the Wilderness and No Closer to the Promised Land: Bilski’s Superficial Textualism and the Missed Opportunity to Return Patent Law to its Technology Mooring, link to papers.ssrn.com; Nonpatentability of Business Methods: Legal and Economic Analysis, link to papers.ssrn.com.)
If we are talking policy, I don’t think that software ought to be protected for 20 years and as broadly as other technologies. See A Method for Reforming the Patent System, link to papers.ssrn.com; Tailoring Legal Protection for Computer Software, link to papers.ssrn.com
Under the U.S. Constitution, those are choices for Congress, not the Supreme Court. Machines have been in the Patent Act since 1790 and there is no forthright way to interpret patent law to exclude novel, inventive, and adequately disclosed and delimited software claims. I believe that we would be better off with different contours (shorter duration, more limited rights, different remedies) for software claims.
The Supreme Court ended the Benson case by recommending that Congress consider alternative approaches for software. Unfortunately, those efforts have been stymied by various industries. Section 101 has been off the table. Even the NAS and FTC reports following the State Street debacle steered clear of 101 reform. We are paying for that lack of foresight.
Prof Menell, you write:
“Under the U.S. Constitution, those are choices for Congress, not the Supreme Court”
but, with my European outlook, I’m not convinced.
You invoke the Constitution’s “useful arts” to argue that the Supreme Court should find claims directed to business methods per se to be ineligible as not within the “useful arts”. SCOTUS can do the same, with claims directed in substance to programs for computers. I say this based on what I have observed in my 40 years of progress in Europe under the EPC. As you know, the EPO routines grants software and business method claims, but only when the claimed subject matter uses technical means to solve a technical problem. In other words, Europe promotes the progress of useful arts by granting exclusive rights to novel, non-obvious and useful contributions to the useful arts, but not otherwise.
Is that not what The Constitution and The Congress has tasked the USPTO and the Supreme Court with doing, right from the outset?
I say, better late than never. Come on SCOTUS, recognise that if you wait for Congress you’ll wait for ever. Screw your courage to the sticking place and do now what you should have done before State Street.
Max, Congress was very clear on what it authorized patents for in 1973. It was the CCPA, the Federal Circuit, and in particular, the first patent attorney ever appointed to a Court of Appeals, that threw American patent law into chaos.
S I G H
And the Merry Go Round begins again with Ned trying to throw Judge Rich under the bus.
Ned – let me remind you – YET AGAIN – that it was Congress that made these changes in the Act of 1952. You confuse the fact that Judge Rich was the best possible judge to understand exactly what Congress did only because that understanding of what Congress did does not align with your desired end state.
Stop the chicanery and attempted muck-rucking.
Once again, MaxDrei refuses to honor the differences in Sovereigns and wants the US to use EPO law.
No, MaxDrei, the Congress cannot change or delegate to another branch what Useful Arts means.
Further, you exhibit an alarming LACK of understanding of the separation of powers in wanting the Judicial Branch to write the law in the first place (even as you get wrong what law can be written).
It is no real surprise though, as you have ever been an echo to the “Ends justify the means” mantra in wanting your desired end state.
Peter,
Your exclusion of business methods from the Useful Arts is a F@IL.
Your desire for a different system of protection for software is phrased (somewhat) appropriately as you are not saying that it is out of the patent system and instead are providing a different system of protection. The plain fact that software is equivalent to hardware (and firmware) is problematic for you, but at least as far as I can tell, you are not saying something entirely far-fetched.
“Under the U.S. Constitution, those are choices for Congress, not the Supreme Court”
Bingo.
As for “we are paying” I would suggest that that statement can be taken in many VERY different ways.
Wow, nice edits
The reality is Peter Menell that you have no basis for your opinions. The reality is that the software industry in the US is ten times what it is in any other country with the patent laws. All the empirical evidence says that we should keep a strong patent system for software. You have no empirical evidence that is credible to the contrary.
Moreover, all the empirical evidence is that business methods need and should deserve patent protection. Moreover, anyone that has a science background and has worked in innovation (like me for 30 years) knows that business methods are at the forefront of the innovation. That information processing machines coupled with humans is great opportunity right now.
Moreover, try to use real patent law. Start with the elements of a claim and tell me why you think my elements are a witch or use 102/103/112 and be real.
I know you are a professor that gets papers published in the vanity pressed called law journals that are the biggest fraud going right now. Try to live in the real world with integrity and ethics. You will be able to sleep at night like me.
It all comes down to one or more elements of your claim are a witch. How about just using real patent law and forget the witches.
“First, Peter, you have absolutely zero evidence that the system as it presently exists (including Prometheus v. Mayo and the CAFC’s decision in Sequenom) does not effectively promote progress in “revealing the mysteries of nature.”
Why are you asking for evidence for a strawman?
The point is not whether the judicial branch’s intrusion into the domain of the legislative powers is “effective” to the one part of the Constitutional directive. That Constitutional directive was a directional grant of power. If the Constitution wanted to give that power to the judicial branch, they could have.
They did not.
“Second, the patent system implodes
LOL – to your feelings/opinion/philosophy maybe – but what you feel as “implosion” is actually objectively noted as the single greatest advance in innovation in human history.
The gates are open wide – because they must be in order to welcome innovation in forms that cannot be known today. “What’s the statute going to say” – in order to match the possibilities of innovation, ANY workable statute is going to have to “say” effectively the same thing, and say it in an open-gate manner.
Try brushing up just a little on the study of innovation.
MM: “First, Peter, you have absolutely zero evidence that the system as it presently exists (including Prometheus v. Mayo and the CAFC’s decision in Sequenom) does not effectively promote progress in “revealing the mysteries of nature.”
Nonsense. If the patent system doesn’t allow one to protect a mystery that one revealed, it follows quite plainly that the patent system does not promote progress in revealing the “mysteries of nature.”
How could it?
By not hampering future discoveries over much.
1) How does one “hamper future discoveries”…? (which discoveries exactly, and by whom exactly…?)
2) How does this supposed “future harm” fall under the proper realm of the limited judicial role as defined by the requirement of having a present case or controversy…?
(who exactly has what NOW that suffices to allow the Court to intrude?)
These are not minor questions.
Ken: you’re saying in essence that some new uses of existing drugs would pass 101 muster, and some wouldn’t.
Right.
what do you think it would take for a new use of an existing drug to be patent eligible? Different dose levels? Different route of administration?
Couldn’t hurt. There’s also a zillion other different possible steps that could be recited.
The bottom line, though, Ken, is that your statement above about the Supreme’s “explicit” rubber stamping was plainly false. So walk it back. Admit the error and walk it back. This is a bad habit you guys have gotten yourself into. You played the same game in the run-up to Prometheus and it blew it up in your face. Live and learn for a change, mkay?
Also, as I’ve already pointed out, this case isn’t about “new uses of existing drugs.” There are all kinds of serious and problematic issues — including eligibility issues — that can arise when people claim “new uses of existing drugs”. I’ve been discussing those problems here for years.
But this case isn’t about that.
Remember: there’s a huge mess to be cleaned up. The Supreme Court knows it, the CAFC knows it, Congress knows it, the PTO knows it, the academics know it, and pretty much every honest practitioner and educated member of the public knows it. This claim may lie, barely, on the “survivor” side for one reason or the other but there is no way — absolutely no way — that “detect this discovery I discovered using the same conventional tools I used” is going to get the stamp of approval from the Supreme Court. And the reason why is obvious to everyone (or should be). All this baloney about the intent of the framers isn’t going to make a hill of beans of difference to the Court.
I’m open to your interpretation regarding the new use of old drug issue in Mayo, but I don’t think it’s a slam dunk. Unfortunately the Supreme Court said it sort of in passing and didn’t elaborate enough to indicate if there were unstated implicit qualifiers…and btw I’m not a maximalist…I agreed with Myriad and probably draw the line somewhere between Mayo and Sequenom.
Unfortunately the Supreme Court said it sort of in passing and didn’t elaborate enough to indicate if there were unstated implicit qualifiers
And that’s because they weren’t deciding the issue. All they did was signal to their audience — and they did this throughout the opinion — that they weren’t saying “every claim that recites a correlation or implicates a natural law is ineligible.” They said the opposite. And they meant it.
And guess what? Over a million newly granted patents since then.
Fyi, there are pretty much always going to be “qualifiers” and that’s why it’s important to be as clear as possible when discussing any of the patent statutes. Otherwise you end up wasting a lot of time, yours and everybody else’s (and I’m using “yours” in the general sense).
I’m not a maximalist…I agreed with Myriad and probably draw the line somewhere between Mayo and Sequenom.
Good to know. Personally I don’t see the two cases (Mayo and Sequenom) on a gradient between which a line can be easily drawn. They present distinct problems and the only common bond between them, really, is a discovered “natural phenomenon” that is (in my opinion) protected far too generally. As for Myriad, I would have used different reasoning to get to the same result (dead claim).
I’ll also point out that the claims at issue in all three cases — Myriad, Mayo and Sequenom — are obvious junk. The fact that I’m not afraid to point that out — and I never was — is a big difference between me and the “experts” out there who insist that the other statutes are “better” but seem incapable of either articulating why that’s the case for the actual claims at issue, or how it was that the claims made it out of the PTO in the first place.
Finally, it goes without saying (or should go without saying) that patents are not the only way to promote progress in science. It’s remarkable how often this basic fact is ignored by the handwringers out there who seem 100% sure that without a zillion patents on every piece of micromental knowledge that somehow the world is going to stop turning and the US is going to become a third world country. It’s absurd but apparently that’s the only script they got.
Anybody want to talk about Theranos? Some of the same brilliant “investors” who are going to save us all apparently were willing to throw a lot of money down that sewer hole. Maybe it could have been used for something else? Yes, it’s a real mystery.
Lots of noise and fury, signifying nothing.
Again.
Just how many strawmen do you want to beat up in your rants?
So where are they?
Where are all the patents protecting discovery over the past 100 years?
Lets take a look at them. Then we can see which amount to someone yelling “there is gold in them thar hills” and getting a patent to protect the discovery.
If the don’t turn up, I will be shocked I tell you….
I also am wondering where all the patents for “discoveries” are hidden. Perhaps they have their own Group/subgroup(s) in CPC and previous to that their own class/subclasses in USPC?
Mr. Snyder,
This is actually a great question.
Reminds me of the Solo Cup cases and the span of what, fifty or so years that people thought that the actual words of Congress meant one thing, when they really did mean something else.
every subsequent statute – the Acts of 1793, 1836, 1870, and 1952 – incorporated both “inventions” and “discoveries” into its text
1793: “That when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application…”
Discovery was dropped when both “new” and “composition” were added from the 1790 version that did not have compositions, but simply manufactures, etc. One cannot discovery a manufacture. But one can discover a composition, or a law of nature.
Cleary, Jefferson did not believe that one could get a patent on the discovery of a composition that was not new, albeit, not known or not previously in use. The what he had in mind was clear. The courts have been consistent since.
Facts. Get the facts straight.
Should read, “one cannot discover a manufacture.”
Section 3 of the 1793 Act reinforces the dual focus – requiring that “every inventor . . . shall swear . . . he is the true inventor or discoverer
of the art, machine, or improvement. . . .” See also § 10 (referring to the patentee as the “inventor or discoverer”).
Section 1 of the 1836 Act establishes a Patent Office “to superintend, execute, and perform, all such acts and things touching and respecting the granting and issuing of patents for new and useful discoveries, inventions, and improvements.” Section 6 authorized “any person . . . having discovered or invented any new and useful art, machine, manufacture, or composition of matter” to seek patent protection. The dual eligibility framework appears more than a dozen times throughout the 1836 Act.
The Senate Report leaves no doubt that Congress fully intended patent protection for applications of scientific discoveries – including revealing and unfolding the “mysteries of nature.”
The next general revision of the patent laws took place in 1870. See Patent Act of 1870, Ch. 230, 16 Stat. 198 (Jul. 8, 1870). The updated statute perpetuated the dual structure of the prior acts, referring to “invention or discovery” and “inventor or discoverer” throughout the statute. See R.S. §§ 4884, 4886, 4887, 4888, 4890, 4891, 4892, 4893, 4895, 4896, 4897, 4899,
4902, 4908, 4916, 4917, 4920, 4922, 4923, 4924, 4926, 4927.
If you read the brief, you will see that the discovery thread runs through the entire legislative fabric of U.S. patent law (as well as patent laws throughout the world).
Congress fully intended patent protection for applications of scientific discoveries
Whatever Congress “fully intended” is a far cry from what Congress wanted or expected people to be able to claim. Congress has had hundreds of years to step in and say “People should be able to claim newly discovered laws of nature and newly discovered natural phenomenon as such so they can sue people who rely on the existence of those laws or phenomenon.” But Congress didn’t do that and I think we all know why.
Are you suggesting that Congress is okay with lawyers scrivening around those prohibitions by characterizing the laws and phenomenon as “processses” (e.g., processes of thinking about the laws, or processes of observing the laws)? That certainly seems to be what you are suggesting. Do you have any evidence for that proposition?
A law of nature cannot be claimed in the abstract. The discoverer of such law or phenomenon must claim a practical application.
There must be inventiveness, but judged on the basis of the claim as a whole under Section 103. The Flook/Mayo test mistakenly (at least based on the Neilson case, the principal support) excludes consideration of the scientific discovery in evaluating inventive application.
Section 112 addresses concerns about inventiveness adequacy of disclosure and scope. That is what doomed Morse eighth claim, not patent eligibility.
Congress can add more limits if it deems them appropriate. The courts must follow Congress’s framework (and constitutional limitations). Injecting 103 and 112 into 101 misapprehends the statutory design.
strike the word inventiveness in the third paragraph. It should read:
Section 112 addresses concerns about adequacy of disclosure and scope. That is what doomed Morse eighth claim, not patent eligibility.
Peter: The discoverer of such law or phenomenon must claim a practical application.
But “the practical application” of the phenomenon has to be more than knowledge or recognition of the phenomenon itself. That’s what sunk the claims in Mayo.
By the same logic, if the “new” phenomenon is “detectable thing is here” then the practical application can’t be “detect the thing here.” There has to be more.
And there is nothing more in Sequenom’s claims. They are just terrible.
Injecting 103 and 112 into 101 misapprehends the statutory design.
Really? Says who? Where does Congress say “Under no conditions can any of the considerations used in evaluating patentability under statute X be invoked in statute Y”. Where did they say that? Why can’t it be a seamless web, with overlapping considerations?
If this is such a huge issue, where are your complaints (and the complaints of your fellow amicia) about 101 considerations being injected into 103? Because that surely happened. And it’s still happening! Why weren’t you gettin’ all Constitutional over that?
There must be inventiveness, but judged on the basis of the claim as a whole under Section 103.
You really think the claims as written are non-obvious in view of 103? Explain why. And try to do it without invoking all those ridicjouls judge-made “secondary factors” that make it easier for patentees (because those judge-made considerations are oh-so unconstitutional, separation of powers and all that).
Here’s the prior art:
PCR was known to be incredibly useful for detecting super small amounts of DNA
fetal cells were known to be in maternal blood
fetal cells have DNA
cells break and spill their DNA
PCR works in maternal serum
Go ahead and tell me why the claim is non-obvious.
There is nothing in our brief to suggest that the Sequenom patent could be invalid on various grounds. We weighed in for the specific and narrow purpose of correcting the confusion and errors surround section 101.
The concluding section of our brief notes that: “The claims in question may well fail for lack of novelty, obviousness, or inadequate disclosure. But the conclusion that the application of a scientific discovery is ineligible unless the implementation is also inventive conflicts with clear statutory text, legislative intent, and two centuries of patent jurisprudence. . . .”
“The Court simply did not have the materials that it needed to address patent-eligibility of scientific principles in the Mayo case, resulting in regrettable errors. The Mayo and Sequenom decisions open up the absurd possibility that the discoverer of a monumental scientific discovery who claims specific and practical applications for curing disease or addressing climate change will be denied patent protection on the ground that he or she did not also apply it inventively. If the inventor has met the other requirements of the Patent Act – novelty, non-obviousness, and adequate disclosure – then all Congress has required is that the discoverer apply his or her discovery for a
practical purpose. . . .”
“We weighed in for the specific and narrow purpose of correcting the confusion and errors surround section 101.”
Malcolm is not interested in that. He wants what he wants by any means necessary.
To him, there is no impact to employing improper means of law, and it is him, specifically, that makes fun of those that point out that our “nation of laws” very much includes the safeguard of separation of powers.
Peter, one cannot discover an old machine or manufacture.
One can discover, however, an old composition albeit not previously known.
Similarly, one can discover a principle, a law of nature, though not previously known. To the extent that Art is the way one applies the laws of nature to produce new manufactures, one can discover an art, though not previous known.
I think the 1793 statute was very careful not to statutorily allow one to patent the discovery of an existing composition.
The case law, e.g., Morse, relying on Nielson v. Harford, held that one cannot patent a principle in the abstract. That is where the real controversy is even today, 150 years after Morse, and 200 years after the patent statute of 1793.
I believe the claims in the case potentially going up to the Supreme Court do not claim a principle in the abstract, but claim the act of looking for, testing for, fetal DNA in maternal plasma. That is physical, and new. It meets the statutory requirements.
“To the extent that Art is the way one applies the laws of nature to produce new manufactures, one can discover an art, though not previous known.”
P0ppyc0ck.
You are once again Ned trying so very hard to NOT give proper weight to the co-equal statutory category of process.
And once again, you are so very wrong.
“Principle in the abstract” was just one of a dozen or so terms of art that the 1952 Act abolished when it removed from the judicial branch the ability to set the meaning of the term “invention” through the power of common law law writing.
Ned is one of the primary offenders of those who will not give proper credit to the distinction between statutory law and common law.
He employs a rhetorical device of expanding the use of the legal term “statutory” to obfuscate the fact that he wants to infuse back into 101 a notion that Congress removed in the Act of 1952.
He knows this full well (or ought to know this), as I have consistently and patiently corrected him time and again.
Ned,
It is (once again) you and your “version” that has the facts incorrect.
You glommed onto a certain perception about Jeffeson, then repeated yourself so much that you convinced yourself that the law was “clearly” how you wanted it to be – but as Peter points out, you “missed a spot.”
Oopsie for you.
Ned is clearly an anti-patent judicial activist. I think he is one to get the business. Ned is not on here to debate and try to understand patent law, but to push an agenda to get business.
“bearing teste by the President of the United States, reciting the allegations
and suggestions of the said petition, and giving a short description of the said invention or discovery,” Patent Act of 1793.
Gee, it does include discovery.
Night Writer,
It is Ned, that to this day, refuses to give proper credit to the law that is simply inconvenient for his desired “version.” The inclusion of “discovery” whenever one sees “invention” alone in the rest of the Act is meant to include BOTH “invention” AND “discovery” is the manifest purpose of 35 USC 100(a).
He has steadfastly not only refused to acknowledge this, or refused to provide any cogent alternative, he has refused to change his errant view that cannot stand with the knowledge of that section of law.
It is indeed unethical to advocate law in this manner. This is NOT arguing for a change in law – which requires that the true state of law be admitted as necessary. This is subterfuge and deceit in pretending that the law is something that it is not.
Some may argue and be plain wrong in their understanding of the law – but Ned does not have that excuse. He has a duty that he is violating when he argues as he does.
Interesting charts showing the penetration of google into the national policy machines. Still unreported, the many google judges, the google PTO director, the special no-jury google patent court conjured up under the AIA, etc, etc. I ran into one of these google drones the other night, and he was bragging how the ‘American Invents Act’ strengthen all US patents and was a signature achievement of google ‘educating’ the administration. Orwellian.
Really remarkable how google has used the ‘patent troll’ theme so effectively. Is ‘new speak’ a masters degree in the valley?
link to theintercept.com
If the AIA was such a good and strengthening thing, then why the rush to file prior to its effect (and not the opposite, a lull before so that more applications would fall under its ‘jurisdiction’)…?
I have asked this before – and never received a cogent and legally meaningful answer.
From your link: “Over the past seven years, Google has created a remarkable partnership with the Obama White House, providing expertise, services, advice, and personnel for vital government projects.”
Anyone else remember the Google approach to that dreaded (and over-hyped) “Tr011” problem with the Office having Google software in place PRIOR to the Office announcement….?
Anyone else remember the Director having closed door and unrecorded meetings with “constituents” including Google that to this day remain sealed as to content (Yay administration that politicked on a ticket of “openness” and has set a record for being the LEAST open administration ever).
Transperacny….?
Who needs that?
Questions about Google – and making fun of those asking those questions…?
Sure, why not (See the sar casm sign that I am holding up – it’s REALLY big)
You do need to visit the link though to see the interactive charts – WOW.
(but I am not “so serious” mind you… 😉 )
Speaking of the “Tr011” theme, we are now OVER A YEAR since Ron Katznelson asked the Executive Office to come clean and “clarify” its use of that term in its muckraking political “white” paper.
Barack…?
Barack…?
Barack…?
Nobody cares about anything Ron Katznelson says. He’s a hack, just like you.
LOL –
The “he’s a hack” so who cares if he is right line of pure B$.
Ad hominem at its purest.
Yay Ecosystem !
Happy Decade of Decadence
By way of interesting contrast on this discovery-patenting issue, some years ago I was peripherally involved* against a broad pending application patenting attempt [which did not succeed] on the Nobel Prize discovery of a new form of carbon, AKA “Bucky Balls.” Interestingly there was no such outpouring of amicus efforts to support getting very broad claims in that case [versus narrow claims by others to specific applications of this material].
So I wonder about the patent histories of other such scientific discoveries?
*because a client, with a patent to only narrow application claims, and no claim to the discovery or the material itself, being improperly forced by the PTO into an interference with the subject broad application.
I do not recall that, or why a “broad” item claim would (or should) not pass.
Is there an analogy to be made to those such items that did pass – either on the countless lesser known items, or perhaps on the few man-made elements that earned a patent right?
Because Paul doesn’t like it.
‘Bucky Balls’ is an interesting example. 1. Do ‘bucky balls’ exist in ‘nature’ – lets’ say maybe for now. 2. Assume some published paper – theorizing that such as structure might be able to exists (but does not disclose how to make). 3. Inventor come along – and invents a way to create ‘bucky balls.’ 4. He claims, al la the chemical arts, the composition ‘bucky balls’ made by this method. 4.1 Can she also claim the ‘bucky ball’ structure? 5. ‘Bucky balls’ subsequently found occurring in nature. Would we all agree that the composition claim in step 4 – is valid? Or is this a 101 issue under the new test being discussed? Mayo might say: 4.1 was valid – until the bucky ball was found in nature? So in hindsight 101 subject matter bar?
4.1 is not necessary, but would be a inherent property of whatever optional claim format was used to claim the manufacture.
5 renders the previous (rightfully proper at that time) claim ineligible. 4 AND 4.1 are no longer eligible (do not mix “valid” and eligible” – two different sections of the law).
Also, the use of the word “hindsight” is problematic, as that term is also a term of art and you are not using it in the proper context. 101 is NOT a “time-dependent” section of law, like 102/103 where the term has its proper meaning.
Point blank, nearly ALL of the chemical (and biochemical) arts have an “inherent” weakness in that we just don’t know what else is “out there” in the universe and that what we “invent” may in fact be in nature’s warehouse – OR may at some future point in time, become available through nature and be in nature’s warehouse – it is critical to remember that the universe is NOT static).
Let’s use a hypothetical:
Given that this world’s “water” is 97% salt water, we can use pure water as an example. Let’s create a world underwater called Atlantis. In this ocean city, a version of man with gills thrives and has a patent system just like ours. One day, and for some given utility, an Atlantean invents pure water. For argument’s sake, let’s say this is not only different in degree, but different in kind.
Ten years after the grant of the patent, an exo-oceanic exploration discovers pure water “on land.”
Was the patent “improvidently” granted? Arguable both ways – “yes” and “no,” but the bottom line is that what once was easily eligible has ‘become’ ineligible.
Same story, but another Atlantean invents “dark pure water” at about the same time. His patent survives the discovery of pure water “on land.” However, at the 14 year mark, due to the evolution of the universe, for the first time ever, dark water starts appearing in the sky above the land (for argument’s sake this was a noted change in the sky, which was heavily researched at the ten year mark). Just because this second item was a “new” presence in the universe, the warehouse of nature exception still fully applies, and his patented invention has now ‘become’ equally NOT eligible.
The eligibility question is NOT a time-based question. It is merely “lazy” thinking to think that the universe is static and thus anything found in nature’s warehouse must be something that predates the invention, but that is just not the thrust of the warehouse of nature aspect.
All of this was explicated in the run-up and Malcolm-v0mitfest aftermath of the Myriad case.
Iwa, can one claim diamond having created the artificial diamond?
Absolutely the wrong takeaway Ned….
But think of it this way:
Situation One: diamonds in nature existed but were never discovered.
Situation two: diamonds in nature did not exist prior to the invention, but the evolving universe creates them after the invention.
In BOTH cases the warehouse of nature aspect means that a granted patent – granted PRIOR to either of the situations, is now ineligible.
And this occurs NOT from any sense of timing in the “prior art” sense.
anon,
May I suggest that if one invents a product which is in nature but unknown that one can still obtain a patent?
I think the product of nature test must be limited to the fundament elements in the case of actual invention. In the case of “discovery,” one cannot claim something one finds in nature although not previously known.
There a difference between invention and discovery. An invention is the creation of man, not something found on the road.
You can “suggest” anything that you want to.
That does not mean that what you suggest is in accord with the meaning of the point that I am discussing.
There is ZERO basis for what you want as to apply it to what you deem “fundament[al] elements.
And finally, you STILL have not addressed the law as written by Congress in 35 USC 100(a). Why is it that I have to remind you nigh constantly of law that you find “inconvenient”…?
“The decision in Mayo came as a shock to patent practitioners and the inventive community.” What??? “Unfortunately, many patent litigators – and many of the amicus briefs filed in Sequenom” were not shocked and correctly opposed the “radical” effort to provide patent protection for laws of nature sought in that case. Where is the “inventive community” anyway? Silicon Valley VC firms? Big Pharma? “Professors”/consultants/”expert” witnesses???
“How could the Supreme Court overlook the clear language running throughout the history of patent law authorizing patent protection for inventions and discoveries? Why would the Court turn away from the long tradition holding that practical application, not inventive application, suffices to render a discovery patent-eligible?” How could the authors overlook the “long tradition” of excluding laws of nature from patentable discoveries?
Section 101 was enacted to protect inventions and discoveries made by man (“new and useful process, machine, manufacture, or composition of matter”), not Nature. If someone is the first to discover what has always existed in Nature, that is called advanced scientific knowledge, not “invention.” If that person, or someone else discovers an innovative technology to utilize Nature, then, and only then, should that discovery be eligible for patent protection.
The brief recognized and cites the long tradition excluding patenting of laws of nature in the abstract. At the same time, the brief explains that patent law has, since the founding era, authorized and encouraged the patenting of practical applications of laws of nature.
Your comment reveals a mistaken impression about the legislative intent behind the patent laws. We prepared the brief because the Mayo briefing and decision overlooked the historical development of patent protection and misunderstood critical jurisprudence.
The brief reveals specific legislative history showing that Congress sought to use patent protection to reveal the “mysteries of nature.” The history contradicts your assertion that patent law requires both discovery and inventive application of laws of nature. Congress is free to impose the latter requirement, but the legislative record is otherwise. As is the Neilson v. Harford case, upon which Mayo is based.
We are a nation of laws. The Supreme Court has a constitutional duty to interpret them faithfully.
To your last sentence, “We are a nation of laws. The Supreme Court has a constitutional duty to interpret them faithfully.” it must also be noted what that actually means.
Far too many here (and elsewhere) like to think that the judicial branch has unlimited power to rewrite (or to “interpret”) law any way that branch of the government sees fit (and the higher within that branch, the more power).
These people have the notion of common law as a power unstoppable (and unlimited).
Patent law is expressly different.
Often I have phrased this as a separation of powers issue.
Those seeking to achieve their desired ends have made it a point NOT to address this, but to attempt to belittle the very notion of separation of powers.
But that notion too, makes up this “nation of laws.” Faithfully interpreting means also faithfully recognizing the the point that “interpretation” ends and common law law writing has taken over.
It unquestionably is a separation of powers issue.
Peter, but your brief misstates to the extent you do not focus on the changes between 1790 and 1793 when Jefferson added “new” and “composition,” but dropped discovery.
Ned,
To the extent that you have overhyped that single facet (and omitted all of the other references supplied by Peter – I think that his “extent” is de minimus.
Steve, I agree that Congress never intended to allow the patenting of products of nature or laws of nature. Never.
A use of a product of nature. Yes. The use is new, the product not.
A new, physical application of a law of nature, yes, but not the law itself.
I believe, however, that in Sequenom, the Feds got it wrong. Testing of maternal plasma for fetal DNA simply was not done prior to the discovery of its presence there. The fact that the tests themselves were routine seems to me to be a side issue, almost an irrelevancy.
Ned,
Playing the devil’s advocate – and to use your own phrase – where is the “Point of Novelty”? The natural fact? The old test?
(maybe, the PoN is the claim itself… just like I have always told you)
anon, novelty in the 102/103 has nothing to do with 101’s newness.
You have avoided the question, Ned.
Try again.
“Furthermore, the intent to protect conventional applications of new discoveries was incorporated directly into § 101 of the 1952 Act.”
If this is true, then it is likely that 101 is Unconstitutional, and thus, all patents issued under the 1952 (and latter) acts are void.
Sorry Alex, you cannot get there from here.
You might try to provide some theory as to why 35 USC 100(b) [as an eample] is somehow Unconstitutional, instead of merely mouthing that word.
As it is, all I am left with is the impression that you do not understand what that word means.
That’s amusingly ironic.
Except not Paul – as clearly there is a distinction between NO background provided, and the mere “Bri’ar Rabbit” game of having to repeat background previously provided.
But I am sure that you want to imply that I have not ever provided any background – and I can assure you that you are sadly mistaken to attempt such an implication.