Did The Patent Act of 1952 Significantly Narrow The Scope of Judicial Exceptions Or Even Render Them Entirely Obsolete? Judge Rader's opinion holds that the 'inventive concept' theory propounded by Judge Lourie is inconsistent with the Patent Act of 1952. Judge Moore's opinion echoes this sentiment. Judge Newman's opinion seems to go even further, appearing to suggest that it was legislative intent that the Judicial exceptions be abandoned entirely by soley relying on the text of the law. Judge Rader: The Patent Act Of 1952 Makes Any New Combination Of Steps, And Any New Use Of An Old Machine Or Composition Eligible Subject Matter Only Judge Rader's opinion supplies supporting arguments. Judge Rader's central thesis in this respect is that "Because a new combination of old steps is patentable, as is a new process using an old machine or composition, subject matter eligibility must exist even if it was obvious to use the old steps with the new machine or composition. Otherwise the eligibility analysis ignores the text of sections 101 and 100(b), and reads Section 103 out of the Patent Act (pg. 23)." Support for this thesis hangs primarily on Judge Rader's interpretation the text of 100(b) and his version of the context in which it was introduced. Judge Rader's take on 100(a) and 103 are of secondary importance and we discuss those later. His opinion about 101 is informed by his view of 100(b). So what does 100(b) actually say? 100(b) reads: "The term 'process' means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. In regard to 100(b), Judge Rader states: "Specifically, the 1952 amendents added Section 100(b) to ensure that doubts about the scope of a 'process' under the pre-1952 version of the patent statute would not be read into the new Act." Using this tentative statement as a springboard, Judge Rader then assembles evidence to essentially make the argument that a new process consisting of old patent eligible material is always eligible subject matter. He cites P.J. Federico, both before and after the act was passed: Federico Statements Were More Definitive After Enactment Why might before and after be significant? Judge Rader cites Federico four times. Let's take a look at what Federico said in those citations and when he said it: Before: " the 'definition of 'process' has been added... to clarify the present law as to certain types of methods as to which some doubts have been expressed...' ." After - in P.J. Federico's "commentary": " ' Remarks have appeared in a few decisions and elsewhere that new uses are not patentable... [I]f such remarks are interpreted to mean that a new use or application of an old machine, manufacture or composition cannot result in anything patentable then such statements are not and have never been an accurate statement of the law.'" After - Here Judge Rader inserts another quote into an argument: "The 'primary significance' of adding Section 100(b) was to make clear that a method was not 'vulnerable to attack, on the ground of not being within the field of patentable subject matter, merely because it may recite steps conventional from a procedural standpoint and the novelty resides in the recitation of a particular substance, which is old as such, used in the process.' " After - also from the "commentary", but here Federico himself cites his "Reviser's Notes" (legislative history) : "The...definition 'clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions of patentability are satisfied.' " Federico's comments appear to have been somewhat more circumspect before passage of the Act than after. And they mirror Judge Rader's spring board. Judge Rader does not mention that the other statements of Federico, which are less circumspect, and which he then uses to support a more significant contention, were made after enactment. Why? As food for thought, lets start with a look at some of Judge Rich's comments much later in life. And then, a bit of background on the manipulation of "legislative history." How Was The Patent Act of 1952 Passed? - Judge Rich's Comments Lets look at somebody's report of Judge Rich's comments about the passage of the Act. This is taken from Rememberances and Memorial: Judge Giles S. Rich, by Neil A. Smith: *** "In accepting the Jefferson Medal, Judge Rich explained how the Patent Act, which he and Pat Federico had drafted in 1952, came into being. The Codification Counsel to the Coordination Subcommittee of the Judiciary Committee of the House, Charlie Zinn, 'had worked on several codifications for the Judiciary Committee.' As Judge Rich said of the committee: 'When it got a law all written up and approved it liked to see it enacted, and Charlie knew how you got it done. You got it on a Consent Calendar at the appropriate moment, and that meant no floor debate. It was because of this little technique that you got a new patent statute when you did." "As Judge Rich put it: 'And that is the way you got a lot of your laws. It is a great way of conserving hot air. Can you imagine what debates on the floor of the House or Senate about most of the cardinal points of patent law would sound like?" "Judge Rich continued, '[t]he New Patent Act went through both houses on consent calendars, and those houses relied on the unanimous recommendations of their respective committees, and when Truman signed the bill, we got the new law." "Legislative intent was provided later, as Judge Rich explained, in the form of the Reviser's Notes, included with the Bill, which were written by Pat Federico in consultation with Giles Rich." *** Hmm. So it appears that Judge Rich was proud of having rammed something through Congress on the basis of recommendations by committees. Additionally, he also seems happy that the intent of the legislation was memorialized after the legislation was enacted. Why? He also mentions a "Codification Counsel" and "codifications." What are those? The Manipulation Of Legislative History I did some searching and found a paper on the topic of the use of legislative intent and history. One example quoted in the paper provided this interesting citation from U.S. vs. Taylor, citing 120. Cong. Rec 41795 (1974): "Mr. Dennis... I have an amendment here in my hand which could be offered but if we can make up some legislative history which would do the same thing, I am willing to do it." Anybody wishing to see more examples can look at Justice Scalia's opinions on the topic of legislative history. It appears that attempting to legislate after the fact with legislative history is a common technique. (I need to add a reference to the paper citing U.S. vs. Taylor here). Placement On Calendar And Floor Vote So how was the vote without debate actually sold on the floor? SENATE RECORD: CODIFICATION OF PATENT LAWS - BILL PLACED AT FOOT OF CALENDAR 9097: Mr. Wiley: "...The bill simply constitutes a restatement of the patent laws of the United States." REVISION AND CODIFICATION OF LAWS RELATING TO PATENTS 9323: Mr. Saltonstall: "I am not a patent lawyer, but I know patents are a very technical subject. Does the bill change the law in any way or codify the present patent laws?" Mr. McCarran: "It codifies the present patent laws. It passed the House, and it was approved by the Judiciary Committee of the Senate." What Is A Codification Bill? So the Senate Record and Judge Rich mention codification. What's a "codification bill?" Essentially, a codification bill is a bill that attempts to modernize and streamline law. Over time, as amendments and bills are passed, the text of the law hangs together less well and is harder to read. Furthermore, case law develops and so in addition to the fragmentation of the text, one must simultaneously bear in mind a lot of relevant case law when even reading the statute. So interpreting the law becomes less efficient. A codification attempts to streamline the text, and where possible, it can incorporate important case law. Why is that significant? In a codification bill, there is a judicial presumption that the new text was intended to follow the text of the existing statute in meaning and to leave precedent intact - so rephrased passages should not be interpreted as substantively altering the law. Bill Sponsor And Other Congressmen Indicate No Change In The Law With Respect to Eligible Subject Matter Intended - The Testimony Of I.J. Fellner On the floor of Congress, quick passage without debate was sold using the argument that the bill simply restated or "codified" the patent law. So how was the bill sold at the committee level? The material in the testimony of Mr. Fellner is the most interesting I've seen. PATENT LAW CODIFICATION AND REVISION, FRIDAY JUNE 15, 1951 - HOUSE OF REPRESENTATIVES SUBCOMMITTEE NO.3 OF THE COMMITTEE ON THE JUDICIARY Statement of I. J. Fellner, Manager Patent Department, Dr. Salsbury's Laboratories, Charles City, Iowa: Mr. Fellner objected to the removal of a phrase from section 101 of an earlier version of the bill (H.R. 9133). The phrase reads: "An invention in the nature of a discovery as embodied in a new and useful art, machine, manufacture or composition of matter, or new and useful improvements thereof may be patented." He goes on to state: "I feel that the deletion of this paragraph in the old version might give rise to certain implications, namely, that the invention in any event must be in the nature of some kind of mechanical structure, but that the discovery, for instance, of a new principle of nature which can be embodied in some useful art, machine, or composition of matter that such discovery might not be patentable." Mr. Fellner then went on to discuss the Funk Brothers Supreme Court case, and expressed a desire that language be put in place so that such a decision would not occur again. Referring to the stricken language (pg. 118): "This language would make it clear that if the heart of the invention lies in the discovery of a principle or law of nature, such a discovery might be patentable if it can be embodied in a new and useful application." He goes on to suggest reintroducing the old language "...so that it be made clear what we understand by invention, and have it specifically understood that where a discovery has been made which involves a natural principle and is useful and practically applicable, but such application of the newly discovered principle of nature does not in itself call for inventive ingenuity, that it be then likewise recognized that an invention has been made." Although significant, Mr. Fellner's view of the bill with and without the additional verbiage is not as important as what occurs in the following exchange: pg. 118 Mr. Fellner "Now most of these inventions representing the discovery of new effects in known compounds would be absolutely nonpatentable, under the Funk brother decision." Mr. Bryson. "Are they patentable today?" Mr. Fellner. "They are patentable..." Mr. Fellner goes on to explain that while the patent office might accept such inventions, some courts might not recognize them as an invention worthy of a patent. Mr. Willis. "Is that consistent with the statement just made that they are patentable today?" Mr. Fellner futher elaborates (pg. 119) that the patent office might accept such inventions but courts might vary in their opinions on the matter. He again mentions the Funk Brothers decision. And then a little later: Mr. Fellner...."In other words, the case where the heart of the invention just resides in the discovery, but the practical application thereof suggests itself and does not call for any inventive genius is not conclusively covered. In other words, if the essence of the invention is merely a discovery of a law of nature it would seem from the Supreme Court decision that it might be construed as not being an invention." Mr. Willis ..."Well I thought you were satisfied with the present law, and that your only objection was that the new bill did not embody, that is, the language in H.R. 9133 was omitted, that was your quarrel with the pending bill?" Mr. Fellner. "I do not want to broaden it: I just want to have it clarified. And I would like to say -" Mr. Willis. " I think it should be clear." Mr. Fellner." I certainly would like to see clarification on the point, where the invention resides in the discovery of a law of nature, or a principle of nature, where such a discovery can be practically employed, where it has some useful application and can be embodied in something like medicine, whether it is art or a treatment. Such things, we think, should be patentable. However, I have grave doubts whether the new language even used in connection with the definition under under section 100 (a) would take care of that, because the definition alone might give rise to differing interpretations. The old section provides a clarifying statement, the old section in H.R. 9133, I mean. Mr. Bryson. "There is no intention to change the law as it is presently written: the purpose is just to make it clearer." Mr. Fellner. "I understand that, Mr. Chairman. I merely think that the original wording as set out in H.R. 9133 is very much clearer- I might say, modifies the bare definition in the pending bills by making unequivocal that which might now be merely inferrible." ... Mr. Willis. " You would prefer, or rather advocate an an amendment to carry out what you have in mind?" Mr. Fellner. "That is what I am actually trying to do." Mr. Willis. " But I do not think that is what this particular bill is intended to accomplish." ... Now of course here the discussion of changes in law is specifically in regard to subject matter eligibility. This is in contrast to the discussion on the floor, which was speaking of the bill in its entirety. Initial Conclusion: A Major Change In Subject Matter Eligibility Is Not What Was Sold To Congress Prior To Passage Of The Act So what happened with The Patent Act of 1952? History Of The Patent Act Of 1952 © 2009-2013 Alta Financial & Insurance Services, LLC