Mayo v Prometheus - Gwu - George Washington University

514 European Intellectual Property Review
For example, if use of an invention offends public
policy, even a machine 95 or transformation 96 cannot be
patented. Moreover, if an improvement is clearly not
within the "useful Arts" to which the US Constitution
limits congressional patent power, the improvement
cannot be patented. 97
It warrants emphasis that the
machine-or-transformation test is not a policy in its own
right. It is merely instrumental, a means for judging the
pre-emptiveness of a principle-implementing claim. The
machine-or-transformation test is not a positive test that
if satisfied confers patent-eligibility on a claim; it is a
negative test that if not satisfied typically leads to
patent-ineligibility, so that ,satisfying the
machine-or-transformation test is not a sufficient
condition for patent-eligibility.
More impmtant, as Prometheus tells us:
"[A] process that focuses upon the use of a natural
law [must] also contain other elements or a
combination of elements, sometimes referred to as
an 'inventive concept,' sufficient to ensure that the
patent in practice amounts to significantly more than
a patent upon the natural law itself." 98
That statement hints at a positive test of patent-eligibility
but does not explicitly disclose it by telling us in so many
words how to recognise when a claim "amounts to
significantly more than a patent upon the natural law
itself''.
But Prometheus's harmonisation ofthe case law gives
us ample and powerful clues: we can examine its view
through rose-tinted lenses of Neilson and Diehr and look
at the opposite side of the patent-ineligibility holdings in
Benson and Flook. By doing that we discern how to
recognise when a claim goes beyond a mere statement of
a natural principle. What Prometheus instructs is this:
The implementation of the principle must
add to the principle more than just the
conventional expedients that scientists or
mtisans in the relevant field know and use,
or the implementation should at least
purport to do so (the lessons of Prometheus
and Flook).
A novel apparatus helps (Neilson redux).
Novel co-operation or co-action is very
helpful (Diehr redux).
The claims should not be open-ended and
exceed what the inventor has taught the
public to do to exploit the principle
(Morse).
That is how Prometheus teaches us to recognise when a
claim "amounts to significantly more than a patent upon
the natural law itself''.
The war between section 101 and
sections 102-1 03
Finally, it was argued that "virtually any step beyond a
statement of a law of nature itself should transform an
unpatentable law of nature into a potentially patentable
application sufficient to satisfy§ 101 's demands" and all
remaining screening functions should be performed by
§§ 102 (novelty), 103 (obviousness), and 112 (enablement
and definite description). 99 The comt emphatically rejected
this view as conosive of the patent system.
This approach, the court protested, would make the
accumulated law of§ 101 and its predecessor provisions
dating back tO the firSt US patent ad 00 a "dead letter". 101
The case law dating back to the 19th century against
patenting ideas, principles of nature and the like is not
codified in§§ 102, 103, or 112, and therefore would be
abrogated by this proposal. Only § 101 addresses such
doctrines, by limiting the grant of a patent to a person
who "invents or discovers" a new "process, machine,
95 E.g. a machine or article of manufacture for poisoning people. See Lowell v Lewis , 15 F. Cas. 1018, I 019 (C.C.D. Mass. 1817) ("For instance, a new invention to poison
people, or to promote debauchety, or to facilitate private assassination, is not a patentable invention") (Story J.); a process for deceiving consumers into believing a product
is of higher quality than it actually is-see Rickard v Du Bon 103 F. 868 (2d Cir. 1900) (patent on process for making cigars appear to be made from more expensive tobacco
held invalid since its only utility was to deceive customers). In the altemative, these machines or processes can be deemed not "useful", as the statute requires them to be.
But they are useful, in any ordinary sense of the term, to those who desire to use them (consider the B01·gias ). It is just that some courts have disapproved of that utility.
(More recent authority tends to retreat from Lowell and Rickard. See Juicy Whip Inc v Orange Bang Inc 185 F. 3d 1364, 1367-1368 (Fed. Cir. 1999).) Perhaps a better
question to have asked in the Lowell case would have been whether poisoning people, promoting debauchery and facilitating private assassination are within the "useful
At1s", as that term was understood at the time of adoption of the Constitution.
96 E.g. a process addicting consumers to smoking cigarettes by adding to cigarette tobacco an addictive substance such as additional nicotine, which alters (transfonns) brain
dopamin:e pathways. See "Making the Decision to Quit Tobacco: Nicotine Addiction", New York Times, http:/lhealth.nytimes.com!health/guides/specialtopic/smoking-and
-smokeless-tobacco/nicotine-addiction.html [Accessed June 5, 2012]. The same utility considerations apply here as apply in the preceding note.
97 Article I §8 cl.8 of the Constitution authorises Congress to grant patents in order to "promote the Progress of ... useful Arts". See generally Richard H. Stern, "Being
Within the useful Arts as a Fm1her Constitutional Requirement for US Patent-Eligibility" [2009] E. I. P.R. 6.
98 Prometheus 132 S. Ct. 1289, 1294 (2012) (citing Flook 437 U.S. 584, 594 (1978)).
99 Prometheus, 132 S. Ct. 1289, 1303 (quoting the amicus curiae brief of the Govemment). Like the "considered as a whole" argument, this one has been taken up by the
patent bar. An argument of this type was made against Flook shortly after that decision, in the late 1970s, when the court vacated and remanded several judgments of
patent-eligibility for reconsideration in the light of that decision. See In re Bergy 596 F. 2d 952 (Ct Cus. & Pat. Apps 1979). In his dissent in Diehr, Justice Stevens commented
caustically on the Bergy opinion in particular and the general refusal of the Court of Customs and Patent Appeals to follow the guidance of Supreme Court opinions on
patent-eligibility, culminating in its judgment in the Diehr case: "In my judgment, this reading of F/ook-although entirely consistent with the lower court's expansive
approach to§ 101 during the past 12 years-trivializes the holding in Flook, the principle that underlies Benson, and the settled line of authority reviewed in those opinions."
Diehr 450 U.S. 175, 205 (1981).
100 Patent Act of 1790, Ch. 7, I Stat. I 09, § l (authorising patent grants to applicants who "have invented or discovered any useful art, manufacture, engine, machine, or
device, or any improvement therein not before known or used").
101 Prometheus, 132 S. Ct. 1289, 1303 (2012).
[2012] E.I.P.R., Issue 8 © 2012 Thomson Reuters (Professional) Uk Limited and Contributors