Hey, it’s my blog.

I just spent some time reading the PTO 101 guidelines and the arguments made about them earlier this month at the PTO.

Sixty years ago, Judge Rich wrote:  “The drafters of the present statute did their best to take out of the law the undefinable concept of ‘invention.’ Whether lawyers will now take advantage of the terminology . . . and stop talking nonsense is up to them.”  Principles of Patentability, 28 Geo. Wash. L. Rev. at 407.

This from Chief Judge Rader’s opinion in CLS Bank:

In addition, in testimony requested by the Committee, P.J. Federico, a chief patent examiner at the United States Patent & Trademark Office (Patent Office), ex- plained that under the proposed amendment a machine or manufacture may include “anything that is under the sun that is made by man.” 1951 Hearings at 37; see S. Rep. No. 82-1979, at 5 (stating the same principle: so long as the conditions of patentability are met, anything made by man is patentable). The Supreme Court summarized the intent and meaning of these changes when it quoted and approved this famous statement. See Diehr, 450 U.S. at 182.

Indeed, to achieve these ends, the 1952 Act did not merely rely on the breadth of Section 101 and the expand- ed definition of “process” in Section 100(b), but also added the words “or discovered” to the definition of “invention” in Section 100(a). By definition, Congress made it irrelevant whether a new process, machine, and so on was “discovered” rather than “invented.” Both inventions and discoveries are eligible for patenting. This addition confirmed the principle articulated again in Section 103 that an invention “shall not be negated by the manner in which [it] . . . was made.” 35 U.S.C. § 103. The language of the Act shows that the authors of the 1952 Act wanted that principle incorporated into the eligibility section of the Act as well as the patentability sections.

One final point confirming the breadth of Section 101 is the 1952 Act’s deliberate decision to place the substan- tive requirement for “invention” in Section 103. Before 1952, the courts had used phrases including “creative work,” “inventive faculty,” and “flash of creative genius” which compared the existing invention to some subjective notion of sufficient “inventiveness” as the test for patent- ability—by definition a hindsight analysis. See Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L. Rev. 393, 404 (1960). These standardless terms and tests created wildly disparate approaches to determine suffi- ciency for “invention.” Id. at 403–04. Judge Rich ob- served that with “invention” as the test, “judges did whatever they felt like doing according to whatever it was that gave the judge his feelings—out of the evidence coupled with his past mental conditioning—and then selected those precedents which supported his conclu- sions.” Sirilla, 32 J. Marshall L. Rev. at 501 (internal quotation marks omitted).

The 1952 Act focused its central purpose on correcting this systemic problem. “One of the great technical weak- nesses of the patent system” prior to 1952 was “the lack of a definitive yardstick as to what is invention.” Victor L. Edwards, Cong. Research Serv., Efforts to Establish a Statutory Standard for Invention, at 2 (1958) (Study on Standard for Invention). As Judge Rich testified at the beginning of this legislative effort in 1948, “the matter of defining invention” was “what we are trying to get away from.” Id. at 4. As Federico put it, “invention” was “an unmeasurable quantity having different meanings for different persons.” Federico’s Commentary at 183 (mak- ing the statements in the context of explaining why Congress added Section 103)…

After deliberate effort, the 1952 Act replaced any need for an “invention” or “inventiveness” measure with an objective test for “obviousness” in Section 103. See Dann v. Johnston, 425 U.S. 219, 225-26 (1976) (explaining that although “an exercise of the inventive faculty” had been used as a judicial test, “it was only in 1952 that Congress, in the interest of uniformity and definiteness, articulated the requirement in a statute, framing it as a requirement of ‘nonobviousness.’” (internal quotation marks and footnote omitted)). The official “Revision Notes” explain that Section 103 became an “explicit statement” of the “holding of patents invalid by the courts[] on the ground of lack of invention.” S. Rep. No. 82-1979, at 18; see Federi- co’s Commentary at 180 (explaining that one of the two major changes made by the 1952 amendments was “incorporating a requirement for invention in section 103.” (internal quotation marks omitted)); Study for Statutory Standard of Invention (extensively reviewing Congres- sional efforts to redefine “invention,” which culminated in adoption of Section 103). Thus, the central thrust of the 1952 Act removed “unmeasurable” inquiries into “inven- tiveness” and instead supplied the nonobviousness requirement of Section 103.

After enactment of the 1952 Act, both of its principal architects recognized the significance of the elimination of a subjective test for “invention.” Judge Rich, a House Committee architect of the 1952 Act and later an es- teemed jurist, applauded the fact that the Patent Act of 1952 makes no “reference to ‘invention’ as a legal re- quirement.” Principles of Patentability, 28 Geo. Wash. L. Rev. at 405 (emphasis omitted). Judge Rich emphasized that using “the past tense in referring to” what “used to be called the requirement of ‘invention’” could not be over- emphasized. Id. (emphasis in original). Federico expressed the same sentiments. See Federico’s Commentary at 182-83 (explaining that while perhaps the word “in- vented” in the prior patent act may have been the source of judicial demand for more than just novelty, Section 103 replaced any requirement for “invention”).

Contemporaneous commentators also recognized that any need for “invention” had been rejected in favor of nonobviousness. See generally, Karl B. Lutz, The New 1952 Patent Statute, 35 J. Pat. Off. Soc’y 155, 157-58 (1953) (explaining that courts had long ago decided that novelty was not enough and had disagreed on how to determine how much more was necessary, but that that issue was now addressed solely by Section 103); Dean O.S. Colclough, A New Patent Act—But the Same Basic Prob- lem, 35 J. Pat. Off. Soc’y 501, 510 (1953) (explaining that the “condition of inventiveness has been expressed in a variety of ways by the courts,” but the “new provision on inventiveness” in Section 103 was intended to replace and codify prior law). And indeed the courts, including this court, implemented the new statute carefully and reli- giously. See Graham v. John Deere Co., 383 U.S. 1, 14 (1966) (“Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts.” (internal quotation marks omitted)); W.L. Gore & Assocs., Inc v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (Markey, C.J.) (recognizing the district court improperly relied upon one step of a multi-step process to determine nonobviousness); Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349–50 (Fed. Cir. 1984) (recognizing that Section 103 sets forth the standard, and so “synergism” of a known combination is not required). Thus, any requirement for “inventiveness” beyond sec- tions 102 and 103 is inconsistent with the language and intent of the Patent Act.