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Abstract
How does the law construe certain things and activities as knowledge that can become the object of intellectual property? When we look at the quantitative trends in recent patenting activities—more people patenting many more things—we tend to view that, in part, as an effect of the law's ability to construe new kinds of innovation (software, genetic sequences, etc.) in ways that conform to established legal concepts of patentable invention. The assumption is that what changes is not the shape of the box called invention, but the objects that are made to fit that box. But in fact while new technologies produce new innovations, the very concept of invention has not just expanded but undergone substantial qualitative change. The wave of inventive activity associated with the industrial revolution led to an unprecedented reliance on patenting, but as the law articulated ways to protect those inventions, it also took their emblematic form—the machine—as the template for the legal concept of invention. Analogously, the recent reinterpretations of patent law to enable the protection of living organism and biological entities have challenged and modified the traditional machine-inspired concept of invention, initiating a trend toward a more developmental one. The information-based inventions discussed here may elicit a reconceptualization of invention in yet another way.
Notes
Should the full name of this case be stated in text instead of in brackets?
[1] I thank James Leach and the two anonymous referees for their useful comments and criticism, Richard Davis and (once more) James Leach for inviting me to the workshop on ‘Recognising and Translating Knowledge’ (UWA, February 2011), and the workshop participants for two days of lively and engaging conversations. An earlier shorter version of this essay is appearing in Penelope Harvey, ed. Objects and materials: A Routledge companion (London: Routledge, 2013).
[2] Ananda Chakrabarty's patent for a modified bacterium—the first of its kind—was initially denied by the Patent Office because it included a feature—life—deemed to exceed the boundaries of patentable subject matter. That decision was reversed on appeal when ‘life’ was declared irrelevant to patentability. The patent was then confirmed in 1980 by the Supreme Court, which analogised the modified bacterium to a ‘composition of matter’—a traditional kind of chemical invention. The full story is in Eisenberg (Citation2005).
[3] Metabolite is not the patent's assignee, but its exclusive licensee.
[4] I focus primarily of some of the issues that have emerged from the Bilski and Metabolite cases, but time and space constraints force me to skip the important Mayo Collaborative Services v. Prometheus Labs. Inc. ([2012] 566 U.S.), decided by the Supreme Court in March 2012.
[5] US Patent Act of Citation1793, Ch. 11, 1 Stat. 318-323 (February 21, 1793), Sec 3.
[6] In particular, the distinction found in US patent law between inventions as things and inventions as processes become suspect when one looks at nineteenth-century attempts to come up with a legal definition of the invention as machine. Although one would expect the machine to be conceptualised as a thing, it was in fact thought of as a repetitive, periodical mode of operation that yielded certain results. In other words, the machine was not conceptualised as a thing but as a movie—albeit a very boring one due to its repetitiveness (Pottage and Sherman Citation2010, 84). Even when the invention was thought of as a thing (as in the case of the machine) it was, in fact, always already a process.
[7] United States Court of Appeals for the Federal Circuit, In re Bernard L. Bilski and Rand A. Warsaw, 2007-1130 (Serial No. 08/883,892), Newman, Circuit Judge, dissenting, p. 31.
[8] In this sense, information-based inventions may be seen not as the opposite of material inventions in general, but rather the opposite of chemical inventions—‘composition of matter’ in US patent law parlance—where the specificity of the matter involved is paramount.
[9] US Constitution, art. 1, §8: ‘The Congress shall have Power To… promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.’
[10] Official Transcript Proceedings Before the Supreme Court of the United States, Bernard L. Bilski and Rand A. Warsaw, Petitioners, v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director USPTO, Case No. 08-964, November 9, 2009, 9.
[11] Ibid., 7.
[12] Ibid., 18.
[13] ‘The statute defines the term ‘process’ as a ‘process, art or method [that] includes a new use of a known process, machine, manufacture, composition of matter, or material.’ §100(b). But, this definition is not especially helpful, given that it also uses the term ‘process’ and is therefore somewhat circular’ (Bilski, 11, Stevens, J. concurring in judgement)..
[14] ‘While he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery which he specifies, but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent, he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law’ (O'Reilly v. Morse [1853] 56 U.S. 113).
[15] It is anachronistic to talk about ‘claims’ of a patent prior to the modern regime of patent specification, but find the analogy productive in this specific discursive context.
[16] I am compressing a substantial amount of historical evidence into a synthetic claim that may seem to go against the familiar fact that in some countries, patents were granted to inventions that were described through texts, diagrams, or models. I have argued, however, that such evidence was neither enabling (insufficient to allow for the reproduction of the invention by a third party) nor sufficient to identify the invention. My claim is that the legal (not the technological) notion of invention did not emerge till the end of the eighteenth century (Biagioli Citation2006, 1132–40).
[17] The ultimate utility of the invention rests on its diagnostic role, that is, the ability to guide therapeutic actions. In this sense, one could say the effects of the invention start in the diagnostician's mind but then unfold in actions external to that mind.
[18] Brief for Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party, in re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (No. 2007-1130).