Nicolás de Oresmes y sus Planteamientos sobre el Comercio y el Dinero

Treatise writers of the early twentieth century, like their nineteenth-century counterparts, continued to maintain that practical application sufficed to transform a principle into a patentable invention.

Inventiveness or ingenuity in the application was unnecessary. For example, Rivise and Caesar’s 1936 treatise summarized the case law thus:

In all of the decided cases, the Courts have taken great pains to point out the fact that though neither the cause nor its effect is patentable by itself, the means by which the cause is applied to produce the effect is patentable. . . . In other words, the principle of nature itself is not patentable, but its utilization by means of an art, machine, manufacture or composition of matter, when properly expressed in one of these forms, is patentable.

. . . .

In the cases where the inventor was required to be also the discoverer of the law or force utilized, it appeared that the application or utilization of the law became self-evident as soon as the principle was formulated.³⁹⁷

395. See id. (rejecting appellant’s argument based on Wall v. Leck).

396. Judge William Healy authored a somewhat ambiguous concurrence in the case. He began by stating that the claims should be regarded as anticipated by the prior use of natural sunlight, rather than as the attempted monopoly on the use of sunlight. See id. at 953 (Healy, J., concurring). But he also stated that if Steenbock’s real invention had been to determine the most effective degree of ultraviolet exposure, then “[i]t would amount to no more than the ascertainment of a naked fact or principle in nature existing independently of the efforts of the discoverer.” Id. at 954. If he meant that the discovery of optimal conditions for a prior art process should be regarded as a naked principle, then his reasoning is reminiscent of Mayo. But it is not clear if that was Healy’s meaning; he next stated that if such discovery were patentable, it would be “broader than the process itself” in that it would include all processes with the same effect, including exposure of foodstuffs to the sun. Id.

397. RIVISE &CAESAR, supra note 322, §§ 33–34 (emphasis added); see also GLASCOCK &

STRINGHAM, supra note 323, § 1170 (listing and expounding on cases falling under the

Those outside the legal community also saw practical application as the boundary between invention and discovery. In 1934, a committee of the American Association for the Advancement of Science (AAAS) produced a report, The Protection by Patents of Scientific Discoveries, that evaluated both the current state of patent protection, and the possibility of a sui generis regime for the protection of scientific property.³⁹⁸ The report described the current scope of patent-eligible subject matter:

[N]early all the results of research which have some practical application can be patented. Mere theories, formulation of data or discoveries of laws can not be patented unless they are applied practically in a physical, chemical, or electrical process, to produce some new, useful and tangible result.³⁹⁹

Scientific theories were not unpatentable because they lacked inventive application; they were unpatentable because theories themselves did not qualify as processes, machines, manufactures, or compositions of matter.⁴⁰⁰

The AAAS’s proposed sui generis regime defined eligible scientific discoveries as follows:

a. At the time the discovery is made, it shall not be obvious as to how the same could be utilized as a new and useful manufacture.

b. The discovery shall be of such a nature that it may subsequently lend itself to practical application for the creation of a new manufacture . . . .⁴⁰¹

categorical title: “Natural Process: Claims Have Usually Been Sustained When in Process Form, Even If Pretty Close to Nature”).

398. AM. ASS’N FOR THE ADVANCEMENT OF SCI., THE PROTECTION BY PATENTS OF

SCIENTIFIC DISCOVERIES:REPORT OF THE COMMITTEE ON PATENTS, COPYRIGHTS AND TRADE

MARKS (1934) (Supp. to 79 SCIENCE).

399. Id. at 7. The standard of “new, useful, and tangible result” very much calls to mind the language of State Street, although “tangible” here clearly imputes “physical.” See State Street Bank & Trust Co. v. Signature Fin. Grp., Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998) (discussing the standard for patentability of an abstract idea when reduced to a practical application as producing “a useful, concrete and tangible result” (quoting In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994), abrogated by In re Bilski, 545 F.3d 943, 959–60 (Fed. Cir. 2008), aff’d, 130 S.

Ct. 3218 (2010))), also abrogated by In re Bilski, 545 F.3d at 959–60).

400. See Richard Spencer, Scientific Property, 18 A.B.A.J. 79, 80 (1932) (stating that scientific discoveries are unpatentable because they are not processes, machines, manufactures, or compositions of matter as defined by statute).

401. AM.ASS’N FOR THE ADVANCEMENT OF SCI., supra note 398, at 32. In the proposed scheme, while the researcher would be required to register upon discovery, no rights would

The sole purpose of the scheme was to provide protection that the patent system could not; by defining its subject matter as those discoveries without obvious applications, the AAAS report seems clearly premised on the assumption that obvious applications of new discoveries were patent eligible.

So in marking the boundary between discovery and invention, the law approaching the midpoint of the twentieth century remained much the same as it was when the century began. The patentability of natural compounds and mental steps was contested, but for all other kinds of inventions, the division remained between abstract principles on one hand, and practical applications on the other.⁴⁰² If anything, the courts expanded the domain of invention at the expense of unpatentable discovery. Claims in cases like Dick recited little beyond the patentee’s new principle. As in the vitamin D cases, the courts either disregarded Wall v. Leck entirely, or treated it as a mere requirement for some artificial means. Likewise, when courts invoked Morton v. New York Eye Infirmary, Morton usually stood for the proposition that some physical medium or means was necessary to transmute the inventor’s discovery into practical and patentable application.⁴⁰³

V. THE BIRTH OF INVENTIVE APPLICATION

The preceding Parts have shown that from the hot-blast cases of the 1840s through the mid-twentieth century, a doctrine of inventive application was almost unknown in English and American patent law.

Practical application nearly always sufficed to transform a discovery into patent-eligible subject matter. However, in 1948, the Supreme Court’s decision in Funk Brothers⁴⁰⁴ announced a new requirement for inventive application. Contemporaneous courts and commentators recognized that Funk Brothers demanded inventive application for patent eligibility, and recognized that demand as a radical departure from established law. A small but significant line of cases in the 1950s

attach until the discovery became capable of practical exploitation. See id. at 32–33. At that point, a compulsory licensing scheme kicked in. See id. at 33.

402. See RIVISE & CAESAR, supra note 322, § 31; Ruestow, supra note 297, at 92 (characterizing “principle of nature” cases as requiring the inventor to claim only tangible manifestations of his discovery).

403. See, e.g., Miami Copper Co. v. Minerals Separation, Ltd., 244 F. 752, 756 (3d Cir.

1917) (“[I]n its naked sense a discovery is not patentable and can be embraced in and controlled by a patent only when and to the extent that its principle is developed into invention by the disclosure of a medium or means which brings it into practical action.” (citing Morton v. New York Eye Infirmary, 17 F. Cas. 879 (S.D.N.Y. Cir. Ct. 1862))); see also Cunningham Piano Co.

v. Aeolian Co., 255 F. 897, 900 (3d Cir. 1919) (citing Morton for the proposition that “very simple means” suffices to transform discovery into invention).

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

and 1960s carried forward the Funk Brothers doctrine to Flook, which in turn became the foundation of Mayo.