Inventive Application: A History
2016; Fredric G. Levin College of Law; Volume: 67; Issue: 2 Linguagem: Inglês
ISSN
1045-4241
Autores Tópico(s)Intellectual Property and Patents
ResumoThe Supreme Court’s recent cases on patent-eligible subject matter have struggled to draw the line between unpatentable fundamental principles, such as laws of nature and abstract ideas, and patentable inventions. In Mayo v. Prometheus, the Court suggested that only “inventive applications” of fundamental principles fall within the domain of the patent system. Both Mayo and its intellectual forebear, Parker v. Flook, anchored this doctrine in Neilson v. Harford, the famous “hot blast” case decided by the Court of Exchequer in 1841. But the Supreme Court has founded the inventive application doctrine on a basic misapprehension. Neilson’s patent on the hot blast was sustained not because his application was inventive, but because it was entirely conventional and obvious. In both England and the United States, the hot-blast cases taught that inventors could patent any practical application of a new discovery, regardless of the application’s novelty or inventiveness. And for over one hundred years, American authority consistently maintained that practical application distinguished unpatentable discovery from patentable invention. The inventive application test in fact originated in 1948, in Funk Brothers v. Kalo Inoculant, which departed radically from the established standard of patent eligibility. In the wake of Funk Brothers, the lower courts struck down a series of patents unquestionably within the technological arts—arguably the precise innovations the patent system sought to promote. This history is largely forgotten today, but it should serve as a cautionary tale of the patents that could be invalidated if the Court maintains inventive application as the test for patent eligibility. INTRODUCTION 566 I. THE ROAD TO MAYO: A BRIEF SKETCH 570 II. THE HOT-BLAST CASES 577 A. Antecedents: The Watt Patent and “Principles” 578 B. The Hot Blast 579 C. The Neilson Case 580 * Professor of Law, University of California, Hastings College of Law. I thank Martin Adelman, John Golden, Peter Menell, Ted Sichelman, Richard Stern, and especially Joshua Sarnoff for helpful criticism and suggestions. 566 FLORIDA LAW REVIEW [Vol. 67 D. The Hot-Blast Cases Following Neilson 588 E. The Hot-Blast Cases in Subsequent English Law 591 III. THE HOT-BLAST CASES AND SUBJECT-MATTER ELIGIBILITY IN THE UNITED STATES: THE NINETEENTH CENTURY 593 A. Neilson at the Supreme Court 594 B. Lower Courts in the Late Nineteenth Century 602 C. Learned Treatises in the Nineteenth Century 605 IV. THE TWENTIETH CENTURY BEFORE FUNK BROTHERS 609 A. The Supreme Court in the Early Twentieth Century 609 B. The Lower Courts in the Early Twentieth Century 612 C. Commentary in the Early Twentieth Century 621 V. THE BIRTH OF INVENTIVE APPLICATION 623 A. Funk Brothers 624 B. The Reaction to Funk Brothers 631 C. Funk Brothers’ Progeny 635 1. The Davison Chemical Line 635 2. Flook: Funk Brothers Revived 640 CONCLUSION 645
Referência(s)