In recent Bold IP blog posts I have talked about how Nobel Prize winning discoveries are currently unpatentable under US law, and how David Kappos is calling for the US congress to remove section 101 of the patent act. To briefly review, a Chinese biochemist won a Nobel Prize for the discovery of Artemisinin since it is incredibly effective in treating malaria. However since the drug was isolated from a natural source under current US patent law it would be unpatentable.
Taking a renewed interest in patent law the Supreme Court has made a mess of section 101 jurisprudence. Section 101 states that both discoveries and inventions are patentable but under current Supreme Court jurisprudence discoveries are unpatentable. They are either natural phenomena or abstract ideas. Furthermore, despite years of trying, the court has been unable to define “abstract idea”. In trying to do so and moving ever farther away from the dictionary definition of the phrase they have arguably conflated novelty, obviousness, and enabelment. This led Kappos to call for the removal of section 101 from the patent law altogether. Though I supported this call, I do not think it will have the revolutionary effect he hopes.
The issue lies in Supreme Court precedent. Section 101 was adopted by congress as part of the recodification of the patent act in 1870 and amended in 1952. The first cases adopting what would become the judicial exceptions to section 101 came before this date. In O’Reilly v. Morse, which was decided in 1853, Morse was denied a patent on the use of electromagnetism in any form to make permanent marks upon a paper. The question was presented even more directly in Le Roy v. Tatham where the defense argued that the fact that lead at a certain temperature and pressure would “recombine perfectly” was a principle of nature and thus not patentable. The lower court had held that it was a principle of nature but this did not make it unpatentable. The Supreme Court in 1852 stated directly “It is admitted that a principle is not patentable” and then went on to define principle as things such as steam power and electricity. The “invention is not in discovering them but in applying them to useful objects”. A principle by itself is not patentable only a specific use of the principle in a specific way to achieve a specific aim. Le Roy v. Tatham was decided in 1852, and was relied on heavily in O’Reilly v. Morse. The court held that the “principles herein stated were fully recognized” in Le Roy v. Tatham. Most importantly in holding that principles were unpatentable the Court cited no act of congress or aspect of the constitution. As was the custom of the time it relied on “discovered” or “natural law”.
The court did state that allowing principles to be patented would “discourage arts and manufactures against the avowed policy of the patent laws”. Though no cite to authority was given this could be said to rely on Article 1 Section 8 Clause 8 of the US Constitution which ties congresses power to grant patents and copyrights to the promotion of science and the useful arts. Though the similar structure of the second amendment has been found not to limit the right to bear arms to militia service, the Supreme Court has consistently held that the Patent and Copyright clause grants only limited power. If the patent system as set up by congress retards rather than promotes the progress of the useful arts and sciences, the system is unconstitutional. In Graham v. John Deere Co. the Court held the patent and copyright system must promote “useful Arts”. Founded in the Constitution congress is thus limited from enacting a patent system that inhibits “useful Arts” or promotes Arts that are not “useful”. Though it has been argued this interpretation of the cases is fundamentally flawed, most convincingly by Robert R. Sachs, the Court has never taken these arguments seriously.
Where does this leave the removal of section 101? Removing section 101 would remove the language granting patents only to processes, machines, manufactures, compositions of matter, or new and useful improvements thereof. These categories however have only rarely been used to limit patentablity. The Court has in fact described these terms as expansive. Their removal would not suddenly make the inventions found unpatentable by the Court as abstract ideas or articles of nature patentable. As shown by the discussion above, the judicial exceptions do not rest on a legal interpretation of section 101 in any of its forms. They come from Supreme Court precedent established BEFORE section 101 existed.
Though section 101 is mentioned when the judicial exceptions are discussed it is not relied on as authority for the existence of the exceptions. In Diamond v. Chakrabarty, Funk Brothers, Laboratory Corporations of America Holdings v. Metabolite Laboratories, Diamond v. Diehr, and Alice Bank; Le Roy v. Tatham and O’Reilly v. Morse are always mentioned. If section 101 of the patent act is removed the Supreme Court is extremely likely to simply continue to rely on those two precedents and continue to find abstract ideas and natural phenomena unpatentable. As the “broad language” of section 101 would also be removed the Supreme Court might even assume congress is giving it broad authority to enact further limitations on patentability.