Patentable Discoveries

The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,1527 and, although a patentable invention is a mental achievement,1528 for an idea to be patentable it must have first taken physical form.1529 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.”1530 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,1531 for these are the “basic tools of scientific and technological work”1532 that should be “free to all men and reserved to none.”1533

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;”1534 and, though combination patents have been at times sustained,1535 the accumulation of old devices is patentable “only when the whole in some way exceeds the sum of its parts.”1536 Though “inventive genius” and slightly varying language have been appearing in judicial decisions for over a century,1537 “novelty and utility” has been the primary statutory test since the Patent Act of 1793.1538 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.1539 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,1540 but, in Graham v. John Deere Co.,1541 the Court interpreted the provision as having codified its earlier holding in Hotchkiss v. Greenwood.1542 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.”1543 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. 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.1544

Footnotes

1527
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). [Back to text]
1528
Smith v. Nichols, 89 U.S. (21 Wall.) 112, 118 (1875). [Back to text]
1529
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). [Back to text]
1530
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”.) (emphasis in original). Cf. Dow Co. v. Halliburton Co., 324 U.S. 320 (1945); Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 89 (1941). [Back to text]
1531
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). [Back to text]
1532
Gottschalk v. Benson, 409 U.S. 63, 67 (1972). [Back to text]
1533
Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948). [Back to text]
1534
Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945); Marconi Wireless Co. v. United States, 320 U.S. 1 (1943). [Back to text]
1535
Keystone Mfg. Co. v. Adams, 151 U.S. 139 (1894); Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428 (1911). [Back to text]
1536
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. [Back to text]
1537
“Inventive genius”—Justice Hunt in Reckendorfer v. Faber, 92 U.S. 347, 357 (1875); “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). [Back to text]
1538
Act of February 21, 1793, ch. 11, 1 Stat. 318. See Graham v. John Deere Co., 383 U.S. 1, 3–4, 10 (1966). [Back to text]
1539
35 U.S.C. § 103. [Back to text]
1540
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). [Back to text]
1541
383 U.S. 1 (1966). [Back to text]
1542
52 U.S. (11 How.) 248 (1850). [Back to text]
1543
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). [Back to text]
1544
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.” [Back to text]