Statutory Intepretation of Section 101 of the Patent
Statute
Section 101 of the Patent Statute (Title 35) reads as
follows
Whoever invents or discovers any new and useful
process,
machine, manufacture, or composition of matter, or any
new and useful
improvement thereof, may obtain a patent
therefor, subject to the conditions and
requirements of
this title.
General Principles of Statutory
Interpretation
There is available on the Web a document
CRS Report for
Congress,
Statutory Intepretation: General Principles and Recent
Trends
(updated August 31, 2008, Order Code 97-589) which describes
some
of the more important rules that the Supreme Court applies in
interpreting
statutes. It notes that the Court “frequently
relies on
‘canons’ of construction to draw inferences
about the meaning of
statutory language.”
Some quotations
follow:
The starting point in statutory construction is the
language of the
statute itself. The Supreme Court often recites the
‘plain
meaning rule,’ that, if the language of the statute is
clear,
there is no need to look outside the statute to its legislative
history
in order to ascertain the statute's meaning. It was once
axiomatic
that this ‘rule’ was honored more in the breach than
in
the observance. However, the Court has begun to place more emphasis
on
statutory text and less emphasis on legislative history and other
sources
‘extrinsic’ to that text. More often than before,
statutory text is
the ending point as well as the starting point for
interpretation.
A
cardinal rule of construction is that a statute should be read
as a harmonious
whole, with its various parts being interpreted
within their broader statutory
context in a manner that furthers
statutory purposes. Justice Scalia, who has
been in the vanguard of
efforts to redirect statutory construction toward
statutory text and
away from legislative history, has aptly characterized this
general
approach. ‘Statutory construction… is a holistic endeavor.
A
provision that may seem ambiguous in isolation is often clarified by
the
remainder of the statutory scheme—because the same terminology
is used
elsewhere in a context that makes its meaning clear, or because
only one of the
permissible meanings produces a substantive effect that
is compatible with the
rest of the law.’.…
Shall/May:
“Use of ‘shall’ and ‘may’
in statutes also mirrors
common usage; ordinarily ‘shall’
is mandatory and ‘may’
is permissive. These words must be
read in their broader statutory context,
however, the issue often being
whether the statutory directive itself is
mandatory or permissive. Use
of both words in the same provision can underscore
their different
meanings, and often the context will confirm that the ordinary
meaning
of one or the other was intended. Occasionally, however, context
will
trump ordinary meaning.”
General,
Specific, and Associated Words “Ordinarily, the
specific terms of a
statute override the general terms. ‘However
inclusive may be the general
language of a statute, it will not be held
to apply to a matter specifically
dealt with in another part of the same
enactment.’ As with other canons,
context can dictate a contrary
result.
“Another interpretational
guide used from time to time is the
principle noscitur a sociis, that
‘words grouped in a
list should be given related meaning.’ A
corollary, ejusdem
generis, instructs that, ‘where general words
follow an
enumeration of specific items, the general words are read as
applying
only to other items akin to those specifically enumerated.’
These
principles are probably honored more in the breach than in the
acceptance,
however.”
Statutory Language Not to be
Construed as ‘Mere
Surplusage’: “A basic principle of
statutory
interpretation is that courts should ‘give effect, if
possible,
to every clause and word of a statute, avoiding, if it may be,
any
construction which implies that the legislature was ignorant of the
meaning
of the language it employed.’ The modern variant is
that statutes should
be construed ‘so as to avoid rendering
superfluous’ any statutory
language. A related principle applies
to statutory amendments: there is a
‘general presumption’
that, ‘when Congress alters the words of
a statute, it must intend
to change the statute's
meaning.’
“A converse of the rule that courts should not
read statutory
language as surplusage is that courts should not add language
that
Congress has not included. Thus, in a situation where Congress
subjected
specific categories of ticket sales to taxation but
failed to cover another
category, either by specific or by general
language, the Court refused to extend
the coverage. To do so, given the
‘particularization and detail’
with which Congress had set
out the categories, would amount to
‘enlargement’ of the
statute rather than ‘construction’
of it.”
Intepreting Section 101 of the Patent
Statute
Section 101 states the following:
Whoever
invents or discovers any new and useful process,
machine, manufacture, or
composition of matter, or any
new and useful improvement thereof, may obtain a
patent
therefor, subject to the conditions and requirements of
this
title.
The following definitions are
relevant:
Section 100(a): “The term
‘invention’ means invention or
discovery.”
Section 100(b):
“The term ‘process’ means process,
art, or method, and
includes a new use of a known process, machine,
manufacture, composition of
matter, or material.
Moreover Section 101 follows closely the
wording of previous
statutes, including that of 1793. The most significant
change
is the replacement of the term ‘art’
by
‘process’.
Moreover long-established case law, together
with
the doctrine of stare decisis, establishes that
“laws of
nature, natural phenomena, and abstract
ideas” are not patentable.
Mayo v. Prometheus,
132 S.
Ct. 1293 (2012).
“Thus, a new mineral discovered in the earth or a new
plant found in
the wild is not patentable subject matter. Likewise, Einstein
could not
patent his celebrated law that E=mc2; nor could Newton
have
patented the law of gravity. Such discoveries are ‘manifestations
of
. . . nature, free to all men and reserved exclusively to none.’”
Diamond v. Chakrabarty,
447 U.S. 309
(1980).
“
He who discovers a hitherto unknown phenomenon of nature has no
claim to
a monopoly of it which the law recognizes. If there is to be
invention
from such a discovery, it must come from the application of the law
of
nature to a new and useful end.
”
Funk Bros. Seed Co. v. Kalo Co.,
333
U.S. 130 (1948). Moreover these exclusions are
‘implicit’ in the
Statute (see
Mayo v. Prometheus,
132 S.
Ct. 1293.
The statute has to be construed so as to give effect,
if
possible, to every clause and word of a statute.
Thus some
person has to perform some act of inventing
or discovering resulting
in an invention or discovery
which is new and
useful. The invention is required
for fall into one of eight statutory
categories: processes, machines,
manufactures, compositions of matter, new uses
for and improvements
to processes; improvements to machines, improvements to
manufactures;
improvements to compositions of matter. That person may
receive
a patent subject to the conditions and requirements of this
title.
Now “this title” must presumably refer to the
entirety
of Title 35, the Patent Statute. The plain language of the
statute
appears to provide no grounds for asserting that “the
conditions
and requirements of this title” refers only to Sections
102,
103 and 112.
The statute does not say that the person shall
receive a patent.
Therefore the wording of Section 101 does not compel a reading
that
anyone who devises something that arguably comes within the range of
the
categories of permissible subject matter and has some scintilla
of
‘utility’ is entitled to receive a patent, subject only
to
satisfying the conditions of sections 102, 103 and 112.
We now come
to discuss the statutory categories of subject matter.
Amongst the principles of
statutory interpretation enunciated above is
the following: “A converse of
the rule that courts should not
read statutory language as surplusage is that
courts should not add
language that Congress has not included. Thus, in a
situation where
Congress subjected specific categories of ticket sales to
taxation
but failed to cover another category, either by specific or by
general
language, the Court refused to extend the coverage. To do so, given
the
‘particularization and detail’ with which Congress
had set out the
categories, would amount to ‘enlargement’
of the statute rather than
‘construction’ of it.”
(supra). It would seem to
follow from this that,
notwithstanding “the revelations of the new,
onrushing technology”
(Gottschalk v. Benson,
409 U.S. 71),
responsibility for any enlargement of the
‘statutory categories’
rests with Congress,
not with the courts.
It should be noted that the
statute provides for patents
on cultivated varieties of asexually reproducing
plants
(Section 161) and on designs (Section 171). These patents
are analogous
to, but distinct from patents on inventions.
Therefore asexually
reproducing plants and designs fall outside
the categories of subject-matter
eligible for patents under
Section 101.
The three statutories categories
of new compositions of matter,
manufactures and machines are categories of
products.
Moreover manufactures and machines are categories
of
fabricated objects. (The word ‘manufacture’ derives
from the
Latin verb facere, meaning ‘to make‘, and
manus
meaning ‘a hand’, thus indicating that the
word
‘manufacture’ originally signified something made
by hand.
The sense of the word has been broadened to encompass
objects made by machines
and industrial processes.) Case law indicates
that compositions of matter
existing in nature are not patentable:
“Thus, a new mineral discovered in
the earth or a new plant found
in the wild is not patentable subject
matter.”
Diamond v. Chakrabarty,
447 U.S. 309.
Thus the statutory categories of manufactures,
machines and
compositions of matter encompass
fabricated artificial products.
Compositions of matter are
typically characterized by their chemical composition
and include
alloys, chemicals, pharmaceuticals and mixtures of distinct
substances.
The Supreme Court established that genetically-engineered lifeforms
fall
within these categories, provided that they possess
“markedly
different characteristics from any found in nature”.
Diamond v. Chakrabarty,
447 U.S.
310.
Application of the principle of statutory interpretation known
as
noscitur a sociis would imply that the statutory category
of
process consists of those processes that produce
fabricated products
within the three categories of manufactures,
machines and new compositions of
matter. According to the
definition given in Section 100, the term
‘process’
encompasses processes, methods and arts, and includes new
uses of
existing processes, machines, manufactures, compositions of matter
and
materials. However the Supreme Court noted that the principle
of
noscitur a sociis is inapplicable, given that Section
100 gives a
definition of ‘process’ (though unfortunately
the definition given
appears either circular or recursive).
Bilski v. Kappos,
130
S.Ct. 3226 (2010).
The Supreme Court also pointed out that the statute
makes
reference to ‘business method patents’.
The Court subsequently
argued
(Bilski v. Kappos,
130
S.Ct. 3228-3229) that the text of the statute did not
support a categorical
exclusion of patents on business methods.
The four statutory categories
of process, machine, manufacture
and (new) composition of matter are not totally
disjoint: the
category of manufactures would surely include
both
machines and new compositions of matter.
Now (artificial)
compositions of matter are manufactures
charaterized by the chemical
composition of the substance
or substances that have been brought together to
form the
composition of matter. Machines are typically operated
over periods of
time, and through their operation define
a process. Other manufactures will
usually be characterized
not only by their composition but also by their
form.
But processes are distinct from products.
The subject matter
encompassed within a patent claim must surely
be either a (new or improved)
process or product. And if a patent
application is to conclude with patent
claims “particularly
pointing out and distinctly claiming the subject
matter” of the
claim in accordance with the requirements of Section 112 of
the statute,
then the claim limitations should be appropriate to the category of
the
claimed subject matter. Thus a claim to a process or method should
be
provided with claim limitations appropriate to a process or method.
Similarly
a claim to a product (whether described as a manufacture,
machine, system,
apparatus, or composition of matter) should be
provided with claim limitations
appropriate to that product.
Let us consider the category of
compositions of matter. Where
such a composition is a chemical compound, two
samples would
usually be considered as representing the composition
if
they had the same chemical formula. The composition of
an alloy would be
determined by the relative proportions
of the metals constituting the alloy.
The composition of a
mechanical mixture would be determined by the
relative
proportions of the ingredients. Thus it is the relative proportions
of
the constituents (and, where relevant, the relative positions of
the individual
atoms or ions in the molecule) that will in general
determine the composition.
In the case
Cochrane v. Badische Analin &
Soda Fabrik,
111 U.S. 293 (1884),
it was held that a synthetic dyestuff
produced from the hydrocarbon
‘anthracine’ and called
‘artificial alizarine’
was not patentable, if the process was
regarded as producing a synthetic
version of alizarine of madder,
C14H8O4,
a naturally occuring substance
extracted from the madder root. That
particular case was complicated because
the synthetic substance also
contained amounts of other chemicals referred to as
anthrapurpurine and
isopurpurine. Nevertheless the asserted patent could not be
asserted
against any dyestuff called ‘artificial alizarine’
and
containing substantial amounts of alizarine, because alizarine, as
a
substance extracted from madder root and used as a dyestuff from
time
immemorial. This holding exemplifies the principle that one composition
of
matter is distinguished from another by its chemical composition or
by the
relative proportions of the constituent substances.
Let us next
consider the category of machines. If one machine is
identical to another
machine in its construction and physical modes
of operation, then the first
machine is identical, considered as
a machine, to the second machine.
Claim limitations should be
treated as indefinite if they are not
expressed in terms of
the physical properties of the machine, its inputs or or
its outputs,
or in terms of properties that determine and are determined by
those
physical properties. Purported claim limitations whose
construction
depends on the meaning and significance that human
minds,
societies and legal systems attach to the terms of the claim
cannot
specify the “metes and bounds” of the claim in a form
that
can delimit the boundary between infringing or non-infringing machines.
In
fact such claim limitations are in essence no more than attempts to
claim the
manner in which the machine is used.
And purported
systems that cannot be categorized as pure
machines or pure processes
cannot be considered as falling within any
of the categories of eligible
subject-matter. A ‘product’
is produced by a process. A
‘product’ cannot at
the same time be a process.
If a
‘system’ is treated as a claim to a machine,
then a claim limitation
that refers to an ‘advertisement’
(taking the form of a visual
image) must make the claim indefinite,
since, from the point of view of
data structure and physical appearance,
‘advertisements’ cannot be
distinguished from other
sorts of visual images.
We now consider how
the word discover in the statute
should be construed. From earlier
Supreme Court dicta it follows
that
“[A] new mineral discovered in the
earth or a new plant found
in the wild is not patentable subject
matter.”
Diamond v. Chakrabarty,
447 U.S.
309.
Now a new mineral discovered in the earth would surely fall into
the
category of composition of matter, and it would seem awkward
or
bizarre to regard that category, considered as a category, as being
split
into two distinct subcategories of natural compositions and
artificial
compositions. Moreover the new mineral, which would not have
been described in
a publication or patent application, would presumably
satisfy the conditions of
section 102. If the discovery is not patentable
under section 101, then this
must result either from the fact that the
discovery of a mineral in the crust of
the earth, by prospecting, does
not yield new subject matter, as the word
‘new’ is
used in section 101, or else that statutory discovery does
not include
either prospecting or scientific discovery. The discovery of laws
of
nature or of natural phenomena does not result in the discovery of
new
subject matter, even if the requirements of section 102
have all been satisfied.
This establishes that the word new
in the section 101 of the statute has
a significance that has not been
codified in the requirements of either section
102 or 103. A discovery
of a law of nature or of a natural phenomenon never
reveals new
knowledge, if that knowledge was not implicit in
nature.
Similarly the naming of a new plant newly discovered by botanists
from
the North America in the Amazonian rainforest and the recording
of its
characteristics would not constitute new subject matter
for a patent
application, even though the requirements of sections 102
and 103 might be
satisfied.
Claim 13 of the patent application considered in
Gottschalk v. Benson
works out a
standard algorithm for converting binary-coded decimal
representations of
integers to binary representations of integers.
Attempts to construct a natural
efficient algorithm to do this
would lead to an algorithm either identical to
that claimed,
or else to an algorithm differing from that claimed only in
the
order in which the steps are performed and subtotals calculated.
Thus the
claimed algorithm is implicit in the problem once the
problem has been fully
formulated. Many more significant and
important theories in mathematics can be
formulated in first
order logic through specifying some finite list of
axioms.
The theorems of the theory are represented formally
in the
first order theorem by statements that are the end-product
of a sequence of
statements that prove the theorem, with
each statement in the proof
determined from the previous
statements by logical rules that formalize the
rules of
classical logic. Thus the theorems that follow as consequences
of a
specified set of axioms in first order logic are implicit
in the axioms. Thus
discovery of the theorems does not add
new knowledge not implicit in the axioms.
This logical approach
corresponds to the manner in which mathematical theorems
are
deduced from axioms. Of course mathematicians experience
many creative
insights in arriving at theorems not before known,
just as Einstein experienced
many creative insights that led
to his discovery of the famous equation
E
= Mc2. However this knowledge was
implicit in nature, and
soon became embedded in the worldview
of physicists, and its effects were soon
manifested
in experiments.
The Supreme Court in
Mayo v.
Prometheus
established that, where a patent claim recites a law of
nature,
the invention must involve extra elements that transcend
routine
well-understood steps long practiced in the art. Some
inventive
concept is required so that the application
applies the law of nature in a
novel inventive way. Some element
of serendipity or uncertainty. When a
pharmaceutical firm
suspects that a particular compound might prove a
suitable
pharmaceutical for treatment of a particular illness or
disability, a
lot of expensive testing is required to establish
the efficacy of the
pharmaceutical, satisfy regulatory requirements
and bring the product to market.
A doctor, using the pharmaceutical
to treat a particular illness might note
that prescription has
a positive effect on those patients who also suffer from
another
illness or disability, and thus a new use might be discovered
for the
pharmaceutical. Such factors distinguish the invention
or
discovery of new pharmaceuticals and of new uses for
such pharmaceutical
from the devising of tests or treatments
based on scientific knowledge,
where the parameters of the tests
and treatments would inevitably result from
the achievement of
the scientific understanding resulting from research and
discovery
of laws of nature and natural phenomena. Thus, if section 101
of the
statute is to be interpreted consistently with the
remainder of the statute, and
with case law well-established
in Supreme Court jurisprudence, the achievement
of an
invention of the sort that the patent laws are
intended to protect
should, on occasion, require more than
the mere devising of subject matter that
has some scintilla
of utility and that satisfies requirements of novelty
and
non-obviousness with respect to the prior art set out in
sections 102 and
103 of the statute.
To summarize, the statute should be construed or
interpreted
so as to require more than what is expressed in the
following
statement:
Whoever devises something useful shall
obtain a patent
subject to the conditions and requirements of
sections 102, 103
and 112 of this title.
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