Natural laws, patentability

In drafting a patent appHcation, proceeding methodically through the several steps necessary to produce the type of disclosure legally and technically sufficient to satisfy the requirements of the laws of the United States is absolutely essential to a successful granting of the patent. A first step is to outHne those elements of the invention which are absolutely essential to its practice. A body of disclosure should be outlined for each of the essential elements of the claim. This disclosure should describe each element in terms of its function, as weU as the parameters that are relevant to the essential nature of the individual element. For example, if a chemical mixture has a component which acts so as to thicken the mixture, it is appropriate to outHne the family of constituents that can serve this function. At the same time, a full outHne of the disclosure of this individual element will include mention of those chemicals that are preferred for use within the mixture so as to perform the desired thickening function. 

Table 4.1 Some products of nature that are generally patentable under US patent law. Additional patenting criteria (e.g. utility) must also be met. For many products, the patent will include details of the process used to purify the product. However, process patents can be filed, as can use patents. Refer to text for further details...

Barriers to Imitation How is the idea protected from imitation by competitors Is it protected by intellectual property law through patent, copyright, or trademark If not, is it difficult to imitate by its nature How so Is it difficult to reverse engineer Is it protected as a trade secret Are there unique, exclusive sources of components or other supplies Are unique labor inputs required to develop, maintain, support, and extend the product or service ... 

Before delving further into the who, what, where, and when of U.S. patent law, as we will begin shortly, a more basic question worth considering is Why have patents in the first place Aren t they monopolies Aren t monopolies bad These are reasonable questions to ask and reflect the natural tension that has co-existed with patents ever since the Middle Ages when it appears that something akin to patents first hit the scene.15... 

If money damages are deemed an inadequate remedy for making the plaintiff whole, the federal courts also have the power to issue injunctions that force the defendant to perform or cease to perform certain actions. In patent law, injunctions normally take the form of a command to the defendant to cease the infringing activity. In certain instances, injunctions are preliminary in nature, meaning they are issued before a final judicial determination on the merits. Preliminary injunctions are applied only under circumstances in which the plaintiff is deemed to be likely to prevail on the merits and the type of harm caused by the defendant s continued actions is irreparable. 

However, prior knowledge or use in this country, by even a single person other than the applicant for patent, may completely destroy any claim of novelty, according to our law. However, there are recognized exceptions to this rule, particularly where the prior use was merely experimental or where the use had been abandoned or forgotten. The latter doctrine—forgotten or lost art—is applicable primarily to arts or processes, because of the intangible nature thereof, but the doctrine is inapplicable to machines, manufactures, or compositions of matter, which still exist in their entireties, since they can be identified and analyzed if necessary. 

There ore operations of the law of nature which are not patentable. On the other hand, there have been discoveries made in scientific fields which in a sense are phenomena of old and well-known products. These are not described as laws of nature. Problems arise chiefly in relationship to what already is known. Failure to distinguish between product coverage in this area resulted in a categorical application of the rule to both situations. This has occasioned much of the misunderstanding. The courts never intended the meaning of the rule which would declare otherwise patentable compositions of matter to be unpatentable merely because their creation might be the handiwork of nature rather than of man. 

There are numerous decisions that hold product claims to chemical compounds as compositions of matter to be valid within the meaning of the patent statutes. With few exceptions there are no specific references to the rule that products of nature are unpatentable. The statements in the decisions are in sharp contrast with the thought that the rule was at all applicable. For example in the Kuehmsted case (tf), the pure chemical compound known generally as aspirin was held to be patentable because of its new utility. The court held that whatever may have been its antecedents chemically, aspirin in pure form was a new thing. The formerly known crude material was legally a different material in that it had no utility as a medicinal. The court held that aspirin was an article of manufacture within the meaning of the patent law. 

We believe it to be a sound pronouncement to say. . . The discovery of a natural phenomenon, or of a quality or attribute of a well-known article, which discovery is of value to mankind, may be entitled to patent protection. The objection frequently offered to the patentability of such a discovery is that it is a law of nature or a principle of nature and for that reason not patentable. Section 31, Title 35, U.S.C.A. (now 35 U.S.C. 102) authorizes the issuance of a patent to... 

A discovery in the field of science of a new quality or phenomenon of an old product may be (other necessary facts such as being first, timely application, etc., existing) the proper subject of a patent. It does not fall within the term law of nature as that expression is used in the patent. ... 

The ownership of genetic resources was never a part of the discussion with respect to patents since it was made clear that neither a plant nor an animal, nor the knowledge associated with their use (if previously documented) could be patented. Thus, if one discovers a new species of plant from a tropical forest in Papua New Guinea, it cannot be patented. Similarly, it also became clear that (in most cases) global knowledge in the public domain regarding the use of a plant for medicinal or commercial use could not be patented. Thus, the use of Papaver somniferum as a treatment for pain could not be protected under patent law. However, the development of a new procedure for the isolation of morphine from P. somniferum would be patentable. This distinction made it clear that creativity would be required for there to be economic benefit from a widely available natural source. 

Patentable inventions must be useful, "reduced to practice" (35 USC, 102) and, by legal definition in most countries, also amenable to an industrial application. The German concept of a patentable invention describes it as "Lehre zum technischen Handeln" (teaching of a technical operation). The Polish law even requires a strictly technical character of the invention and currently excludes from patentability any biological product as well as pharmaceuticals and chemicals, even if these derive from a technical process. The technical process which is used to make such products, however, is patentable in almost all countries, irrespective of whether these refuse to grant patents on certain or all products of nature. 

Reflections on Patent Protection of Products of Nature Part One International Review of International Property and Copyright Law 9,(5) 409-421, 1978 Part Two ibd. 9(6) 523-541, 1978... 

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