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« Court Report | Main | USPTO Issues Performance and Accountability Report for FY 2014 »

April 07, 2015


It occurs to me on further reflection that the second objection of Justice Douglas was in reality that what was claimed was all solutions to a known problem. It will be recalled that mixed inoculants were known. The problem of inhibition was known. The teaching of the claim was that if you wanted to make a multi-species inoculant, you should simply use non-inhibiting bacterial strains. The obviousness of the claimed subject matter becomes apparent when it is appreciated that Bond or his attorney could have written that claim at the start of his research, before any results were forthcoming. It is arguable that this what Justice Douglas was driving at in the above passage and that if his refusal is generalised it was a refusal to borrow invention from the discovery that a known problem had a solution, that refusal being dressed up in judicial rhetoric equating a rule of nature with solution of a known problem, which unfortunately has been taken out of context and misinterpreted in subsequent opinions. On this interpretation, Funk Brothers is not a ground-breaking opinion as currently believed, but followed commonplace reasoning in patent cases.


Your knowledge of the historical material notwithstanding, you make a grievous albeit simple error with your statement of:

"If the information contained in the specification had been presented for publication in a peer-reviewed journal, it should have been rejected by the referees for lack of supporting experimental detail, and it is unclear why anything less should satisfy the requirements for patentability."

I do hope that you realize that you took some extra liberty and changed the patent laws, conflating what it means to include in an patent application with what it means to publish scientifically.

I do hope that you realize that you will cause more confusion - not less - with the attempted portrayal of patent applications as something that they are not.

Patent applications are NOT science journals, nor are they engineering specifications, nor - importantly - are they meant to be.

If the Courts are going to wield a sword in an attempt to shape patent law [raise the power of PHOSITA (see KSR)], then the trailing edge of that sword will follow the leading edge and what must be contained in an application will NECESSARILY become thinner.

We would ALL be far better off if the direct statement that Justice Douglas was wrong and botched the case of Funk were to be made. For all that you allude to and imply, you do not quite get there, do you?

The resulting convolutions that everyone is forced to jump through - including your statement of "entirely generic and functional" misses the mark of what is allowed under patent law with the Act of 1952.

First, you use the term of "generic" improperly.

Second, the mixed strains were not in fact entirely functional.

The use here of "generic" instead of Douglas's "it's simple" is a weak substitute for the point of simplicity and the opposite that was desired by Douglas (yes, the Flash of Genius). All we gain here is the loss of obfuscation because it is very simple to see that Congress rejected the very premise of Douglas's point of "but that is too simple."

Our collective inability to be direct, to point to the emperor and say "He's not wearing any clothes" IS a part of the problem here.


@ Skeptical

You are completely right that the rules for disclosure in a peer-reviewed journal and those in a patent specification differ. However, bad science remains bad science in whatever context it is recorded and disclosing test procedures but failing to disclose the results when those results are in your hands is bad science. There can be no doubt that the majority of the justices were influenced by the lack of full disclosure, although only Justice Frankfurter made an issue of it. In the UK decision R v Arkwright 1 WPC at p 68, in 1785, where Mr Arkwright's patent was held invalid for insufficiency, it was reported:

"He admits in that he has not properly specified how the machine was made, and he says that he purposely (in prevention of an evil, that foreigners might not get them) omitted to give so full a description of his inventions in the specification attending the last patent as he otherwise would have done."

It seems that Bond was trying to follow the Arkwright strategy of seeking protection without providing an adequate disclosure of what he invented. Once you are alert to that behaviour it is easy to detect. The strategy has never worked well since 1785, although there may be isolated exceptions.

The problem with Funk Brothers is not that Justice Douglas cast his vote on the wrong side: he got that right as he often did. However his reasons were badly expressed with very damaging consequences. The very non-trivial task we all face is to figure out what he really meant and to reconcile that with what he actually said in his opinion. The persuasive power of saying he botched the case approximates zero, but there is a slim hope of persuading the courts to adopt a better and more realistic opinion of his holding and the principles of law that flow from it.

Paul Cole's last paragraph in the 8:48 response says it all. Funk Bros. would have been a much better case if Justice Frankfurter's opinion had been the majority instead of the concurrence.

Alas, poor Mr. Cole, the unwillingness to say that the emperor is in his birthday suit IS part of the problem.

We (the Royal "We") will continue then to be unable to solve the problems We are unwilling to face.

(and to your recognition of "bad science," I would again point out that patent applications are not science [bad or good] at all, and that you do more harm than good with conflating that point. Far too many now "complain" about patents with the incorrect picture of what they are. Remember: the Court is complicit here because it is the Court that sets up "patent profanity" and actually LESSENS the requirement for applications to be like engineering papers because it is the Court that has provided more capability to PHOSITA.)

Like it or not - and whether the Court likes it or not, patents are NOT engineering documents, but instead are legal documents. The more they want to attack us for being "scriviners" the more into the weeds THEY go. Us scriviners "do" this thing day in and day out and they simply will not succeed in out-scrivining us. They really do need to stop trying to write the law (implicitly or explicitly) as they continue to try to do.

The problem with Douglas’ opinion is that it is a mess. Here’s what I wrote in my 1979 article about Douglas’ opinion in Funk Brothers:

First, Justice Douglas noted that that the inventor could not patent the non-inhibition qualities of the bacteria because they were the “work of nature.” Second, Justice Douglas stated that once it became know that certain strains of bacteria had a non-inhibitive quality, “the state of the art made the production of a mixed inoculant a simple step.” Next, Justice Douglas reasoned that there was no invention in the inventor’s composite inoculants “unless the discovery that certain strains of the several species of these bacteria are non-inhibitive and may thus be safely mixed is invention.” However, Justice Douglas concluded that to do so would allow a “patent to issue on one of the ancient secrets of nature now disclosed.” Under this logic, Justice Douglas held the claims to the mixed inoculants invalid as not disclosing an invention or discovery within the meaning of the patent statutes.

As I noted in my footnotes, “the majority opinion is so obscure and inarticulate that it has been cited for a number of different propositions,” including as an unpatentable “aggregate” or an unpatentable “product of nature.” I also characterized Douglas’ logic as “erroneous” as the inventor was not patenting a “law of nature” but instead a practical application thereof, namely a new composite inoculant of bacteria that didn’t exist in nature. Douglas’ reasoning (if you can call it that) also violates the “long standing principle that realization of the problem troubling the relevant industry is frequently more important to patentability then the solution thereof which usually follows in due course” (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 66-68 (1923)).

I stand by what I said then, and, as others have said, it would have been better if Justice Frankfurter had written the majority opinion instead of Douglas who wouldn’t know what a patentable invention was (other than the battery in U.S. v. Adams) if it hit him square in the face.

My thanks to EG for his contribution.

Reference to his 1979 paper reveals the following quote: "The Supreme Court based its decision regarding the validity of the patent on ... whether the mixed inoculant defined a patentable advance within the meaning of the statutes. Indeed the Supreme Court seemed to assume that the mixed inoculant was statutory subject matter."

It is encouraging that we have been thinking on parallel lines.


If only the present Court were on that page.

They are not.

The lines are not parallel - they are skew.

(remember, it was I that Told You So in how the lower courts are applying what the Supreme Court did)

@ Skeptical

Here is a short passage from Act II of A Man for All Seasons:

"MARGARET (Puts a hand on his arm) Father, by this Act, they're going to administer an oath.
MORE (With instantaneous attention) An oath! (He looks from one to the other) On what compulsion?
ROPER It's expected to be treason!
MORE (Very still) What is the oath?
ROPER (Puzzled) It's about the marriage, sir.
MORE But what is the wording?
ROPER We don't need to know the (Contemptuously) wording - we know what it will mean!
MORE It will mean what the words say! An oath is made of words! It may be possible to take it. Or avoid it. (To MARGARET) Have we a copy of the Bill?
MARGARET There's one coming out from the City.
MORE Then let's get home and look at it... (He turns and sees ROPER excited and truculent)
ROPER But sir--
MORE Now listen, Will. And, Meg, you listen, too, you know I know you well. God made the angels to show him splendour - as he made animals for innocence and plants for their simplicity. But Man he made to serve him wittily, in the tangle of his mind! If he suffers us to fall to such a case that there is no escaping, then we may stand to our tackle as best we can, and yes, Will, then we may clamour like champions . . . if we have the spittle for it. And no doubt it delights God to see splendour where He only looked for complexity. But it's God's part, not our own, to bring ourselves to that extremity! Our natural business lies in escaping so let's get home and study this Bill."

I think you stand for Roper, and the superficial and despair, where I stand for argument, and detail, and what hope is available for more favourable interpretation.

As advocates it is our duty to study the opinions that are handed down which are made of words. They may have acceptable interpretations, or be avoidable, or may be clearly wrong in the light of the earlier decisions they rely on. But all most of can do is to study, interpret and argue. That is our job as lawyers and advocates, and we should do that firmly and to the best of our ability. Anything less is poor service to the legal system which we serve.

Sorry Paul, but in a very real sense, you have those roles reversed - and hence, the very real notion of "I Told You So" cannot be ignored.

For all the "argument and detail" that you WANT to think that you represent, the real world simply is not paying attention to you. While you want to think that you are doing enough, it is YOU that suffers from the lack of recognizing that MORE is needed. "Anything less is poor service" meets "Poor service is not recognizing the futility of saying "don't be superficial, take a deeper look."

Paul - point blank - it is THE COURTS that are refusing to listen to you. You need to do SOMETHING more. What you think NOW passes as service IS NOT WORKING.

(sorry for the internet yelling - I prefer bold which is not available)

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