Patentable Discoveries

Article I, Section 8, Clause 8:

[The Congress shall have Power . . . ] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,1 and, although a patentable invention is a mental achievement,2 for an idea to be patentable it must have first taken physical form.3 Despite the fact that the Constitution uses the term “discovery” rather than “invention,” a patent may not be issued for the discovery of a previously unknown phenomenon of nature. “If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” 4 In addition to refusing to allow patents for natural phenomena and laws of nature, the Court has held that abstract ideas and mathematical formulas may not be patented,5 for these are the “basic tools of scientific and technological work” 6 that should be “free to all men and reserved to none.” 7

As for the mental processes that traditionally must be evidenced, the Court has held that an invention must display “more ingenuity . . . than the work of a mechanic skilled in the art;” 8 and, though combination patents have been at times sustained,9 the accumulation of old devices is patentable “only when the whole in some way exceeds the sum of its parts.” 10 Though “inventive genius” and slightly varying language have been appearing in judicial decisions for over a century,11 “novelty and utility” has been the primary statutory test since the Patent Act of 1793.12 Section 103 of the Patent Act of 1952, however, required that an innovation be of a “nonobvious” nature; that is, it must not be an improvement that would be obvious to a person having ordinary skill in the pertinent art.13 . This alteration of the standard of patentability was perceived by some as overruling previous Supreme Court cases requiring perhaps a higher standard for obtaining a patent,14 but, in Graham v. John Deere Co.,15 the Court interpreted the provision as having codified its earlier holding in Hotchkiss v. Greenwood.16 The Court in Graham said: “Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must 'promote the Progress of . . . useful Arts.' This is the standard expressed in the Constitution and it may not be ignored.” 17 Congressional requirements on patentability, then, are conditions and tests that must fall within the constitutional standard.

Underlying the constitutional tests and congressional conditions for patentability is the balancing of two interests—the interest of the public in being protected against monopolies and in having ready access to and use of new items versus the interest of the country, as a whole, in encouraging invention by rewarding creative persons for their innovations.18 By declaring a constitutional standard of patentability, however, the Court, rather than Congress, will be doing the ultimate weighing. As for the clarity of the patentability standard, the three-fold test of utility, novelty and advancement seems to have been made less clear by the Supreme Court's rejuvenation of “invention” as a standard of patentability.19

Footnotes

1

Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 549 (1871). Cf. Collar Company v. Van Dusen, 90 U.S. (23 Wall.) 530, 563 (1875); Reckendorfer v. Faber, 92 U.S. 347, 356 (1876).

2

Smith v. Nichols, 89 U.S. (21 Wall.) 112, 118 (1875).

3

Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874); Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489 (1891).

4

Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948); Diamond v. Diehr, 450 U.S. 175, 187 (1981) ( “[A]n application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection” .). Cf. Dow Co. v. Halliburton Co., 324 U.S. 320 (1945); Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 89 (1941).

5

Gottschalk v. Benson, 409 U.S. 63 (1972); Bilski v. Kappos, 561 U.S. ___, No. 08-964, slip op. (2010); Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 566 U.S. ___, No. 10-1150, slip op. (2012).

6

Gottschalk v. Benson, 409 U.S. 63, 67 (1972).

7

Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948).

8

Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945); Marconi Wireless Co. v. United States, 320 U.S. 1 (1943).

9

Keystone Mfg. Co. v. Adams, 151 U.S. 139 (1894); Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428 (1911).

10

A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). An interesting concurring opinion was filed by Justice Douglas for himself and Justice Black: “It is not enough,” says Justice Douglas, “that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.” Id. at 154–155. He then quotes the following from an opinion of Justice Bradley's given 70 years earlier:

“It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufacturers. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith. (Atlantic Works v. Brady, 107 U.S. 192, 200 (1882)).” Id. at 155.

The opinion concludes: “The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents—gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. A few that have reached this Court show the pressure to extend monopoly to the simplest of devices: [listing instances].” Id. at 156–58.

11

“Inventive genius” —Justice Hunt in Reckendorfer v. Faber, 92 U.S. 347, 357 (1876); “Genius or invention” —Chief Justice Fuller in Smith v. Whitman Saddle Co., 148 U.S. 674, 681 (1893); “Intuitive genius” —Justice Brown in Potts v. Creager, 155 U.S. 597, 607 (1895); “Inventive genius” —Justice Stone in Concrete Appliances Co. v. Gomery, 269 U.S. 177, 185 (1925); “Inventive genius” —Justice Roberts in Mantle Lamp Co. v. Aluminum Co., 301 U.S. 544, 546 (1937); “the flash of creative genius, not merely the skill of the calling” —Justice Douglas in Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941).

12

Act of February 21, 1793, ch. 11, 1 Stat. 318. See Graham v. John Deere Co., 383 U.S. 1, 3–4, 10 (1966).

13

35 U.S.C. § 103.

14

E.g., A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950); Jungerson v. Ostby & Barton Co., 335 U.S. 560 (1949); and Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941).

15

383 U.S. 1 (1966).

16

52 U.S. (11 How.) 248 (1850).

17

383 U.S. at 6 (first emphasis added, second emphasis by Court). For a thorough discussion, see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146–52 (1989).

18

As to the nature of the reward to patentees, longstanding case law had defined a patent as the personal property of its holder, similar to title to land. See, e.g., Horne v. Dep't of Agric., No. 14-275, 576 U.S. ___, slip op. at 6 (2015) ( “Nothing in this history [of the Takings Clause] suggests that personal property was any less protected against physical appropriation than real property. . . . '[A patent] confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser.'” (quoting James v. Campbell, 104 U.S. 356, 358 (1882))); see also McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 609 (1898) (concluding that a granted patent “become[s] the property of the patentee, and as such is entitled to the same legal protection as other property” ); United States v. Am. Bell Tel. Co., 128 U.S. 315, 370 (1888) ( “The United States, by issuing the patents . . . has taken from the public rights of immense value, and bestowed them upon the patentee. . . . This has been taken from the people, from the public, and made the private property of the patentee . . . .” ); Brown v. Duchesne, 60 U.S. 183, 197 (1857) ( “[B]y the laws of the United States, the rights of a party under a patent are his private property . . . .” ).

More recently, however, in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 584 U.S. ___, No. 16-712, (2018), the Court called into question this precedent regarding the nature of a patent as private property, at least with respect to certain constitutional claims. In Oil States, the Court addressed whether inter partes review, a type of patent validity proceeding conducted by the U.S. Patent and Trademark Office (PTO), violates Article III or the Seventh Amendment of the Constitution. Id. at 1. In ruling that such proceedings do not violate either constitutional provision, the Court held that “[i]nter partes review falls squarely within the public-rights doctrine,” reasoning “that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise.” Id. at 6–7. Further, in addressing the precedent suggesting otherwise, the Court stated that these “cases d[id] not contradict [its] conclusion” because “[p]atents convey only a specific form of property right—a public franchise.” Id. at 10. The Court, however, was careful to “emphasize the narrowness of [its] holding.” Id. at 16. First, the Court specified that it ruled only on the constitutionality of inter partes review, and not “whether other patent matters, such as infringement actions, can be heard in a non-Article III forum.” Id. Second, the Court indicated that its holdings were limited to “the precise constitutional challenges that Oil States raised,” and therefore did not foreclose constitutional arguments related to “the retroactive application of inter partes review” or a possible “due process challenge.” Id. at 16–17. Third, the Court noted that “our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.” Id. at 17.

19

Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969). “The question of invention must turn on whether the combination supplied the key requirement.” Id. at 60. But the Court also appeared to apply the test of nonobviousness in the same decision: “We conclude that the combination was reasonably obvious to one with ordinary skill in the art.” Id. See also McClain v. Ortmayer, 141 U.S. 419, 427 (1891), where, speaking of the use of “invention” as a standard of patentability the Court said: “The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.”