at 217–18 (internal quotation marks omitted; alterations incorporated). Judge Martinez then "summarize[ed] certain Supreme Court and Federal Circuit decisions in which those courts have examined questions of patentability in roughly similar contexts," including Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948); Diamond v. Chakrabarty, 447 U.S. 303 (1980); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012); and Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015).
Cole and Roberts[13] argue that any administrative or judicial interpretation of the provisions of any statute, including 35 USC § 101, which places the US in a position where it does not meet the obligations of an international agreement by which it is bound is prima facie incorrect and requires reconsideration, and further that: These considerations seem particularly compelling in relation to the Supreme Court opinions mainly relied on for the extended interpretation applied in the Guidance. Those opinions include Hartranft v. Wiegmann, 121 U. S. 609, 615, 7 S. Ct. 1240, 30 L. Ed. 1012 (1887), Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948) and Diamond v. Chakrabarty, 447 U.S. 303 (1980). Those opinions were well known to and understood by the US Government, the USPTO and US patent attorneys at the time when the TRIPS Agreement was negotiated.
[11] 447 U.S. 303 (1980). [12] 333 U.S. 127 (1948). [13] Id.
As a consequence, the "great void" created by this lack of attention has been filled by the Supreme Court, which is "immune from the political process" and lacks the resources needed to appreciate the effects on U.S. innovation its economy of its policy decisions. This institutional lack of competence is illustrated by the Court's decision in Funk Bros. Seed Co. Vs. Kalo Inoculant Co. (333 U.S. 127; 68 S.Ct 440 (1948), which forms the basis for the PTO's interpretation of the Court's recent cases. (Indeed, in a panel discussion at the Spring BIO IPCC meeting last week in Palm Springs, the Office's reliance on Funk Bros. was readily acknowledged by its representative on the panel.)
at 8. Instead, the case was similar to Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), where a patent applicant combined several nitrogen-fixing bacteria that helped leguminous plants take nitrogen from the air and fix it in the soil. Id.
"the fundamental, scientific principle" but instead "solve[] a technological problem."It should be noted the care with which amici approach the imputed basis for the need for the Court to provide guidance, wherein the brief states that "[t]his reassessment [by the Court, requested by amici and others] need not overrule the Alice/Mayo test, but it would allow a more faithful application of this Court's precedent to achieve the objective of the Constitution's Patent Clause and would respect the text of the Patent Act." In this regard, the brief also notes the Court's reliance in Mayo and Alice on pre-1952 decisions and how those decisions were directed to "patentability" and not patent "eligibility," and that the citation in Mayo of Parker v.Flook with regard to an "inventive concept" was based on only two uses of the term and no reliance on any precedent for what the term meant. The brief also mentions that the term "inventive concept" was absent in Funk Brothers Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948), and Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939), as well as Benson v. Gottschalk, and that in this regard the Court's decision in Diehr overruled Flook until it was rehabilitated (or resurrected) in Mayo. But "'inventive Concept' as a key requirement for patent eligibility finds little support in this Court's historical precedent," amici argue, and yet that is what the Federal Circuit relied upon in invalidating the claims below.Finally, the brief argues that this case is "an excellent vehicle" for the Court's reconsideration and reassessment of the proper eligibility test for processes because it is directed to a diagnostic methods which are "critically important" to innovation and for consistency with the constitutional mandate that the patent laws "promote progress." According to a USPTO report, the current state of patent eligibility "has a direct [(negative)] impact on investment, research, and innovation," citing A. Sasha Hoyt, The Impact of U
v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923) (related to paper-making machines) as examples. While not every one of these cases held that the patent at issue recited eligible subject matter, the article maintains that together they set forth consistent, well-established principles of subject matter eligibility. In particular, these authors argued that the principle that discovery of a "law of nature" did not preclude patentability of an application thereof was so well-established that Mr. Matal and his colleagues quote the Rivise and Caesar treatise to the effect that "'where the inventor was . . . also the discoverer of the law or force utilized,' the claimed invention was patentable even if 'it appeared that the application or utilization of the law became self-evident as soon as the principle was formulated.'" Charles W. Rivise & A.D. Caesar, Patentability and Validity §33-34 (1936).The article identifies the Court's decision in Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), as the case where the Court's eligibility jurisprudence turned (wrongly), leading to later cases culminating in the Court's decision in Mayo Collaborative Services v. Prometheus Laboratories Inc., 566 U.S. 66 (2012), which decision Mr. Matal asserts "is at war with the rest of the Supreme Court's eligibility jurisprudence and with core premises of the patent system." This is a sentiment with which many patent practitioners would agree. The remainder of the article is a respectful explication of why the Court's recent subject matter eligibility decisions are inconsistent with the earlier precedents discussed therein.But there is perhaps another perspective. Perhaps stare decisis (or doctrinal consistency), particularly when considered in a historical context measured in centuries, is not the proper role of the Court (while recognizing the necessity for such consistency over shorter timeframes to avoid serious societal disruption; see, e.g., Dobbs v. Jackson Women's Health Organization
. . . With this level of specificity, claim 22 appears to be properly directed to "the application of the law of nature to a new and useful end," not to the law of nature itself. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) (collecting cases). Yet this level of detail is insufficient in the majority's view, and it remains unclear how much more "how to" would have been sufficient to render the claim eligible under the majority's approach [citations to the record omitted].
Instead, the analysis turns on whether the invention is limited to “an application of [an unpatentable principle] to a known structure or process.” Diehr, 450 U.S. at 187 (emphasis in original); see alsoFunk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) (“If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end.”) (emphasis added). Diehr is instructive on this point.
Even with the recent flurry of congressional activity, it is certainly too soon to bank on reform dramatically expanding patent eligibility. 1 Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). 2 561 U.S. 593, 649 (2010) (rejecting the Federal Circuit’s machine-or-transformation test).