Tuesday, August 07, 2012

CAFC talks about inventions in In re Beineke

From within In re Beineke, a case about 35 U.S.C. § 161 :

As the Supreme Court noted in Chakrabarty, “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” 447 U.S. at 309 (emphasis added). “Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions.” Id. at 313. The trees, by Beineke’s own admission, were not “newly found seedlings,” and the trees in question do not fall within the broadened protection of the 1954 amendments.

Because Beineke does not meet the other requirements of section 161 either as originally enacted or as amended in 1954, we need not reach the question of what is meant by “found in an uncultivated state” — that is, we need not determine what level of human cultivation of the area in which a seedling was found at its inception is necessary to satisfy the statute. The Board correctly determined that the mature oak trees found by Beineke in the front yard of a home were not entitled to plant patent protection under section 161.

The concept of "contemporary legal context" arose:

We must inter- pret the 1930 Act in light of the “contemporary legal context” in which it was enacted—that is, against the historical backdrop of the patent laws and the existing understanding of the language used in the act at the time. Cannon v. Univ. of Chicago, 441 U.S. 677, 698-99 (1979) (holding that the Court’s “evaluation of congressional action in 1972 must take into account its contemporary legal context”); see also Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Curran, 456 U.S. 353, 378 (1982) (holding that in interpreting a statute, the “focus must be on the state of the law at the time the legislation was enacted” and that a court “must examine Congress’[s] perception of the law that it was shaping or reshaping”); Imazio Nurs- ery, 69 F.3d at 1564 (holding that “section 161 engrafts the Plant Patent Act onto the basic patent law, which requires us to apply thereto all the rules, regulations, and provisions of the basic patent law” (internal quotation marks omitted)).

Some old cases were invoked:

In other words, the statute required some “exer- cise of the inventive faculty.” See Singer Mfg. Co. v. Cramer, 192 U.S. 265, 276 (1904); Pearce v. Mulford, 102 U.S. 112, 118 (1880) (holding that to be entitled to a patent, an improvement “must be the product of some exercise of the inventive faculties”); Brown v. Piper, 91 U.S. 37, 41 (1875); see also Dann v. Johnson, 425 U.S. 219, 225 (1976) (“As a judicial test, ‘invention’—i.e., ‘an exercise of the inventive faculty,’—has long been regarded as an absolute prerequisite to patentability.”

And old statutes:

For example, the very first patent act provided a patent could be granted “upon the petition of any person or persons . . . setting forth, that he, she, or they, hath or have invented or discovered” something new and useful. Act of Apr. 10, 1790, ch. 7, 1 Stat. 109, 110 (permitting patents to be granted to anyone who had “invented or discovered” something that was “sufficiently useful and important”); see also Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117, 119 (applying to “any person or persons having discovered or invented any new and useful” invention). The patent act of 1793 required “[t]hat every inventor, before he can receive a patent, shall swear or affirm that he does verily believe, that he is the true inventor or discoverer.” Act of Feb. 21, 1793, ch. 11, § 3, 1 Stat. 318, 321.


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