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Invention and Discovery

Jeffrey A. Lefstin

BIO IP Counsels Committee Conference

March 28, 2017

Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of

matter, or any new and useful improvement thereof,

may obtain a patent therefor, subject to the conditions

and requirements of this title.

1952 Patent Act, Section 101

INVENTION AND DISCOVERY

• 1790 Patent Act, §1

– Granted patents to any person who “invented or discovered any useful art, manufacture, engine, machine, or device . . . if they shall deem the invention or discovery sufficiently useful and important. . . .”

• Dual emphasis on invention or discovery carried forward

– 1793 Act

– 1836 Act

– 1870 Act

Invention and Discovery in the Patent Statutes


Whoever imagines that, because so many inventions

and so many improvements in machinery have been

made, there remains little else to be discovered, has but

a feeble conception of the infinitude and vastness of

mechanical powers, or of the unlimited reach of science.

Much as has been discovered, infinitely more remains

unrevealed.

The ingenuity of man is exploring a region without limits,

and delving in a mine whose treasures are exhaustless.

‘Neither are all the mysteries of nature unfolded, nor the

mind tired in the pursuit of them.’

Senate Report, 1836 Act


Discoveries: The Plant Patent Act of 1930


H.R. REP. NO. 71-1129; S. REP. NO. 71-315

(Committees on Patents)

• Act of 1930 contemplated

protection for cultivated

– Mutants

– Hybrids

– Bud sports

• Discovery of bud sport +

conventional cutting or

grafting → patentable

invention

Quantum of Invention under 1930 Act


• Earlier versions of bill included separate definition of ‘invented or discovered’ for plants

– Removed when bill changed to preclude patenting of wild finds

• Congress rejected PTO suggestion to separate plant and utility statutes

Patentability Statute after 1930 Amendments


• Patentability of syngonium seedling found on

cultivated land

• Board holds that “invented and discovered” must have

same meaning for plant and utility patents

• Mere discovery of new plant cannot qualify as

“invention or discovery,” even if arose on cultivated

land

Ex parte Foster (Bd. Pat. App. 1951)


• Congress amends plant statute in 1954 to clarify that

seedlings found on cultivated land are patentable

It is the opinion of the committee that the enactment of this bill, as

amended, will not only remove any doubt that the legislative intent of the

Congress when it enacted the plant patent amendments clearly intended

that sports, mutants, hybrids, and seedlings, discovered by persons

engaged in agriculture or horticulture, should be patentable....

Ex parte Foster (Bd. Pat. App. 1951)


(a) The term “invention” means invention or discovery.

(b) The term “process” means process, art or method, and

includes a new use of a known process, machine, manufacture,

composition of matter, or material.

35 U.S.C. §100


[D]iscussions of the patentability of new uses are usually

concerned with the simple situation in which a discovery has

been made that a known substance or thing has some hitherto

unknown property, or can be used to obtain a particular result

for which is had not been used before.

Since there is no new or improved object produced, the only

things left to consider are the acts performed, which leads to a

process or method and the statute, as has been said, recognizes

a process or method which involves only a new use of an old

material, as within the field of subject matter capable of being

patented.

Federico’s Commentary on the New Patent Act


It is believed that the primary significance of the definition of

method above referred to is merely that a method claim is not

vulnerable to attack, on the ground of not being within the

field of patentable subject matter, merely because it may recite

steps conventional from a procedural standpoint and the

novelty resides in the recitation of a particular substance,

which is old as such, used in the process.

Federico’s Commentary on the New Patent Act


The Court's precedents provide three specific exceptions to

§101's broad patent-eligibility principles: "laws of nature,

physical phenomena, and abstract ideas." While these

exceptions are not required by the statutory text, they are

consistent with the notion that a patentable process must be

"new and useful."

And, in any case, these exceptions have defined the reach of

the statute as a matter of statutory stare decisis going back 150

years.

Bilski v. Kappos (2010)


• Parker v. Flook (1978)

– Suggestion that fundamental principles be treated as part of

prior art

• Funk Brothers (1948)

• Neilson v. Harford (1841)

Roots of Mayo “Inventive Application”


1. An inoculant for leguminous plants comprising a plurality

of selected cultures . . . said cultures being substantially

unaffected by each other in respect to their ability to fix

nitrogen . . . .

No method has been observed whereby the [non-inhibitive]

strains of the organisms may be differentiated . . . other than

by making actual nitrogen fixation tests . . . with the proposed

mixture.

Funk Bros. v. Kalo Inoculant (1948)


But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants.

But a product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery. Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84.

[O]nce nature’s secret of the non-inhibitive quality of certain strains of the species Rhizobium was discovered, the state of the art made the production of a mixed inoculant a simple step.



But we think that that aggregation of species fell short of

invention within the meaning of the patent statutes.

The aggregation of select strains of the several species into

one product is an application of that newly-discovered natural

principle.

No species acquires a different use. The combination of

species produces no new bacteria, no change in the six species

of bacteria, and no enlargement of the range of their utility.

Each species has the same effect it always had.



• Davison Chem. v. Joliet Chem. (7th Cir. 1950)

– Improved process for controlling gel porosity

– Effect of temperature on gel porosity discovery of a scientific fact

• In re Arnold (CCPA 1950)

– Improved process for electrostatic welding

– Obvious application of discovery of properties of surface versus interior molecules

• Nat’l Lead v. Western Lead (9th Cir. 1963)

– Improved process for lead oxide suspension

– Once relationship between reaction temperature and product uniformity known, no invention in means of regulation

• Armour Pharm. v. Richardson-Merrell (3rd Cir. 1968)

– Enteric-coated trypsin formulation

– Obvious application of discovery that small intestine will absorb trypsin

Funk’s Progeny


This Court has previously discussed in detail an English case,

Neilson, which involved a patent claim that posed a legal

problem very similar to the problem now before us. . . .

The English court concluded that the claimed process did

more than simply instruct users to use the principle that hot air

promotes ignition better than cold air, since it explained how

the principle could be implemented in an inventive way.

Mayo and Neilson v. Harford (Exch. 1841)


Mayo v. Prometheus, 132 S.Ct. 1289, 1300 (2012)



Thus, the claimed process included not only a law of nature but also

several unconventional steps (such as inserting the receptacle

externally, and blowing the air into the furnace) that confined the

claims to a particular, useful application of the principle.

Patentee’s Argument in Neilson:

The mode of heating air was perfectly well known; it was no discovery of Mr. Neilson’s, every body knew it. Air had been heated and there had been different shaped vessels employed for heating the air; for heating the air economically, and for heating it to a higher or lesser degree of temperature; all that was perfectly well known.



Thus, the claimed process included not only a law of nature but also

several unconventional steps (such as inserting the receptacle

externally, and blowing the air into the furnace) that confined the

claims to a particular, useful application of the principle.

Alderson, B. in Neilson:

The blowing apparatus was perfectly well known; the heating of air was perfectly well known; the twire was perfectly well known as applicable to blast furnaces; then what he really discovered is, that it would be better for you to apply air heated up to red heat, or nearly so, instead of cold air as you have hitherto done.



The English court concluded that the claimed process did more than

simply instruct users to use the principle that hot air promotes ignition

better than cold air, since it explained how the principle could be

implemented in an inventive way.

It is very difficult to distinguish it from the specification of a

patent for a principle, and this at first created in the minds of

some of the court much difficulty; but after full consideration

we think that the plaintiff does not merely claim a principle,

but a machine, embodying a principle, and a very valuable

one.

We think the case must be considered as if the principle being

well known, the plaintiff had first invented a mode of applying

it by a mechanical apparatus to furnaces; and his invention

then consists in this: by interposing a receptacle for heated air

between the blowing apparatus and the furnace.

Neilson v. Harford: The Famous Passage


[I]t was the application of a well-known principle, but for the first time applied to a chair. . . . Lord Lyndhurst and the rest of the court held, that this was not a claim to a principle, but to the construction of a chair on this principle, in whatever shape or form it may be constructed. Just so as to the hot blast, only the principle is also new.

Principle or Machine? Minter v. Wells (Exch. 1834)


Househill Coal & Iron Co. v. Neilson (Ct. of Session 1843)

It is quite true that a patent cannot be taken out solely for an abstract

philosophical principle—for instance, for any law of nature, or any

property of matter, apart from any mode of turning it to account in

the practical operations of manufacture, or the business, and arts,

and utilities of life. The mere discovery of such a principle is not an

invention, in the patent law sense of the word. . . .

But a patent will be good, though the subject of a patent consists in

the discovery of a great, general, and most comprehensive principle

in science or law of nature, if that principle is by the specification

applied to any special purpose, so as thereby to effectuate a practical

result and benefit not previously attained.

Househill v. Neilson (Court of Session 1843)


The main merit, the most important part of the invention, may

consist in the conception of the original idea—in the discovery

of the principle in science, or of the law of nature, stated in the

patent, and little or no pains may have been taken in working

out the best manner and mode of the application of the

principle to the purpose set forth in the patent.



• Curtis

– Principle “abstracted from practical application” unpatentable

– Means of application need not be novel

• Merwin

– Nevertheless, the means by which the principle is applied

may be devoid of all invention, and such as any workman

skilled in the art wherein the application is made might

supply, when the discovery is told him.

• Robinson

– ‘Discovery’ of quality in nature: exercise of ‘inventive faculties’

– ‘Developing operative means: not inventive faculties

19th Century Patent Authorities


• Business methods

• Mental steps

• Natural Products

– Parke-Davis

• Purified adrenalin patentable

– General Electric / Marden

• Purified tungsten / vanadium / uranium

unpatentable

• By 1939 CCPA settles on position that purified

products may be patentable if purified form

shows utility not possessed by natural source

Early 20th Century Subject Matter Exclusions


• Dick v. Lederle Labs. (S.D.N.Y. 1930)

– Discovery: soluble toxin cause of scarlet fever

– Administration of purified toxins to humans /

animals routine, but patentable

• Guaranty Trust v. Union Solvents (D. Del. 1931)

– Novelty in Weizmann acetone fermentation

process was newly isolated bacteria

– Fermentation process identical to prior art

20th Century: Lower Courts


2. A method for logging a bore hole drilled for the

production of petroleum which comprises

securing samples of earth at spaced points along the

bore hole for a considerable portion of its length…

subjecting each sample to a treatment suitable for

the recovery therefrom of a hydrocarbon gas,

quantitatively analyzing the gas so recovered from

each sample for its content of at least one selected

hydrocarbon which is the same for all the samples, and

correlating the contents so determined with sample

depth.

Claim in Rosaire v. Baroid (5th Cir. 1955)


• DeForest Radio (1931)

– High-vacuum triode would be patentable if

Langmuir had been first to discover pure electron

discharge

– Lillienfeld had described pure electron discharge

prior to Langmuir’s patent

• Mackay Radio (1939)

– “novel and useful structure created with the aid of

knowledge of scientific truth” patentable

– Patentee had not discovered new “scientific law”

20th Century: Supreme Court


It is quite true that a patent cannot be taken out solely for an abstract

philosophical principle—for instance, for any law of nature, or any

property of matter, apart from any mode of turning it to account in

the practical operations of manufacture, or the business, and arts,

and utilities of life. The mere discovery of such a principle is not an

invention, in the patent law sense of the word. . . .

But a patent will be good, though the subject of a patent consists in

the discovery of a great, general, and most comprehensive principle

in science or law of nature, if that principle is by the specification

applied to any special purpose, so as thereby to effectuate a practical

result and benefit not previously attained.



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