Of the contemporary requirements of patent validity, only novelty (in the sense of prior use rather than publications) was recognised in England prior to 1623.133 Obviousness, or lack of an inventive step, was not clearly recognised as a separate ground of invalidity until late in the 19th century and the distinctions drawn between lack of novelty and obviousness or lack of invention and subject matter were not fully developed in the case law as it stood in 1900.134 As the High Court of Australia noted in National Research Development Corporation v Commissioner of Patents (‗NRDC‘),135 although the Statute of Monopolies had spoken of ―any manner of new manufactures within this realme‖ and of ―the true and first inventor and inventors of such manufactures‖, it nowhere spoke of ―the invention‖.136 The term ‗inventive step‘ appears first to have been used by Fletcher Moulton LJ in 1908 in the course of his Lordship‘s judgment in the English case of British United Shoe Machinery Company Ltd v A Fussell & Sons Ltd,137 a case dealing with a challenge to the novelty of a claimed new combination of known integers, and thus cannot be traced back to the Statute of Monopolies. In 1894, in another English case, Lord Esher MR in The Edison Bell Phonograph Corporation, Limited v Smith and Young,138 responded to a submission that one of the claims of the patent in suit was wanting in subject-matter by saying:
Now, whenever I hear the objection taken to a patent which has been used, which has been bought and sold, which has been therefore treated by men of business as a useful thing, that it is wanting in subject-matter, I look upon it, I confess, with an amused contempt. ...
It really comes to this, that although the invention is new - that is, that nobody has thought of it before - and although it is useful, yet, when you consider it, you come to the conclusion that it is so easy, so palpable, that everybody who thought for a moment would come to the same conclusion;
or, in more homely language, hardly judicial, but rather businesslike, it
133 Although the 1474 Venetian patent statute required that an invention be ―ingenious‖, indicating a need for inventiveness, this requirement does not seem to have been imported into English patent law until much later.
134 R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565, 573-575, 595-599.
135 (1959) 102 CLR 252 (High Court of Australia).
136 Id. at 268-269.
137 (1908) 25 RPC 631, 653.
138 (1894) 11 RPC 389.
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comes to this, it is so easy that any fool could do it. Well, I look, as I say, upon that objection, when all others have failed, generally with amused contempt.139
It was not until the enactment of the Patents and Designs Act 1907 (UK) that a distinction was drawn in statute between novelty and obviousness in the United Kingdom. It was not until 1952 that the United States140 and Australia141 followed suit.142 The High Court of Australia has explained that ―raising the threshold of inventiveness‖ in this way was appropriate to balance the need of inventors for encouragement and the public‘s need to access information.143
The emergence of the independent requirement for an inventive step, first in case law, then in legislative requirements for patentability as occurred in the United Kingdom, the United States and Australia, has always reflected the balance of policy considerations in patent law of encouraging and rewarding inventors without impeding advances and improvements by skilled, non-inventive persons.144
Ⅲ. CONSIDERATION OF PHYSICALITY IN PATENT LAW’S HISTORY
From its earliest days, the commercial and technical innovation the patent system has been about giving the public access to new technologies. The history of the patent system reveals a 500-year-old innovation policy dating back to the Venetian Republic designed to promote innovation, prosperity, employment, and knowledge transfer.
While the Venetian patent statute of 1474 makes explicit reference to the introduction of new devices, in the pre-Statute of Monopolies practice of issuing patents or the cases that preceded the Statute of Monopolies, we see nothing that ties the patent incentive to physical creations. Rather, we see an incentive to
139 Id. at 398.
140 In The United States the concept of non-obviousness was first introduced in Patent Act 1952 (US) § 103. This provision has no statutory precursor and replaced the judge made case law requiring that an invention be disclosed before a patent could be granted: see Giles S. Rich, The Principles of Patentability, 28 GEO.WASH. L. REV., 398-406 (1960). The common law origins of the non-obviousness principle are said to lie in Hotchkiss v Greenwood, 52 US (11 How) 248 (where the invention related to an old method of making doorknobs whereby the doorknob had a certain shaped hole for the fastening of a shank. The only difference was that the inventor substituted a clay or porcelain knob for a metallic knob. The court described the difference as being formal and destitute of ingenuity and invention).
141 Patents Act 1952 (Aust.) s 100(1)(e).
142 Grain Pool of Western Australia v Commonwealth of Australia (2000) 202 CLR 479, 504;
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2007) 235 CLR 173, 192.
143 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2007) 235 CLR 173, 194.
144 Id.
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introduce new industries and trades (described as ―manufactures‖) to the realm.
That practice continued under the rule of Queen Elizabeth I and James I, but not without alleged abuses of the privilege, which were brought to the fore in Darcy v.
Allen and ultimately banished sometime after the enactment of the Statute of Monopolies. That the subject matter for which the Crown might grant a patent was broad is clear in the language in which Darcy v. Allen is described and in the report of The Clothworkers of Ipswich,145 which links the patent incentive to the introduction of any new trade into the realm, either by way of importation or invention. From the descriptions of patentability in these documents, it seems inconceivable that a patent granted for a new trade at that time would have been invalid if it involved the use of a method that did not operate upon a physical object when invoked.
We see in the Statute of Monopolies a codification of the then existing common law, by which reference is made to the inventor, but not the invention. It is indisputable that this drafting was intended to place no fetters on the scope of patentable subject matter so that the patent incentive would be available to encourage the introduction of any sort of unforeseen new trades and manufactures that might benefit the realm. Although the Statute of Monopolies may have outlawed odious monopolies, it said nothing of what types of subject matter would qualify for a patent or what sort of restrictions on patentable subject matter exist. It certainly does nothing to impose a physicality requirement.
Instead, the focus of the Statute of Monopolies is newness; the statute was enacted to ensure that monopolies were not granted in respect of existing industries or trades that were known in the realm, so as to prevent the continuance of past injustices inflicted by the grant of odious monopolies over known artefacts.
In the Industrial Age cases that were decided after the Privy Council divested itself of the jurisdiction to hear patent matters and passed that jurisdiction to the common law courts in 1752, we see a line of authority beginning in the opinion of Eyre CJ in Boulton and Watt v. Bull that employed a similarly broad and unfettered view of the subject matter for which a valid patent might be granted. Evident in that line of cases, is an understanding of the concept of an invention as being something independent of its manifestation or form, thus rendering its form immaterial. This is the basis upon which, the courts‘ early understanding of the concept of invention permitted the recognition of processes, and arguably non-physical processes, as patent eligible subject matter. It is these cases that, despite some early disagreement, set the framework for describing the scope of patent eligible subject matter. Arguably, what they convey is that there is no place for a physicality requirement in the scope of patentable subject matter, and that a lack of physical embodiment in an invention is not to be equated with a claimed invention being a mere abstract or philosophical principle.
145 (1615) Godbolt 252; 78 ER 147.
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When the first United States Patent Act came into being in 1790, it was
―derived from the principles and practice which have prevailed in the construction of that of England‖.146 While it may have been unclear as to whether improvements to existing products or processes that did not involve the creation of a new machine or device were patentable in England, what should be clear from the creation of the five enumerated categories of statutory subject matter in 35 U.S.C. § 101 is that the scope of patentable subject matter was, firstly, intended to be broad and encompassing, as is recognized in modern cases such as Diamond v. Chakrabarty,147 and, secondly, based on the English patent system that allowed patents in respect of new ―manufactures‖, which is one of those five enumerated categories.
In this article it is argued that this broad and unfettered conception of invention as something independent of the material form of the claimed subject matter, is as equally relevant and applicable today as it was at the time of Boulton and Watt v. Bull, Hornblower v. Boulton and The King v. Wheeler. Furthermore, it is argued that this conception of invention is replicated in the United States patent system, by reason of the instigators of that system seeking to leverage of best of the English system they emulated, and their intention to not limit the scope of patentable subject matter to what was then thought to be patentable in England.
The historically-justified alternative to pursuing questions of categorical eligibility based on the application of ―bright line‖ criteria to an invention‘s characteristics, such as whether it embodies a physical element, is deciding subject matter eligibility by reference to the simple question of whether a claimed invention reduces a scientific principle, natural phenomena or an idea to a specific and useful practical application. This approach then allows a greater role to play for patentability standards of novelty, non-obviousness, and adequacy of disclosure148 in determining whether a patent should issue in respect of a particular invention.
Arguably, this technology-neutral approach to patent eligibility has been adopted in the drafting of Article 27.1 of the World Trade Organization‘s Agreement on Trade-Related Aspects of Intellectual Property (―TRIPS Agreement‖). Like the Statute of Monopolies that preceded it, the TRIPS Agreement, does not define the word, invention, and nor does distinguish patentable inventions from the laws of science, natural phenomena and abstract discoveries. It instead requires that patents ―shall be available for any inventions ... in all fields of technology, provided they are new, involve an
146 Pennock v. Dialogue, 27 U.S. 1, 7 L. Ed. 327 (1829).
147 Diamond v Chakrabarty, 447 US 303, 309 (1980) (―Congress intended statutory subject matter to ‗include anything under the sun that is made by man.‘‖) citing the Committee Reports accompanying the 1952 Act: S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No.
1979, 82d Cong., 2d Sess., 6 (1952); Diamond v Diehr, 450 US 175, 182 (1981).
148 35 U.S.C. §§ 102, 103(a), 112 (2006).
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inventive step, and are capable of industrial application.‖ 149 This historically-consistent approach recognizes that patent law is about achieving an appropriate balance between the need to provide sufficient private rights as an incentive to encourage innovation, and the public‘s right to use and build upon existing information and ideas. It aims to provide appropriate incentives to encourage inventors to create new and inventive products and processes by rewarding successful technological advances.
What the history of the patent system tells us is that, while the focus of the patent system has historically been on the production, use and alteration of physical artefacts, this is arguably a product of people‘s notions of technology.
For instance, it is said that in Thomas Jefferson‘s day technology was readily identifiable: if you put technology in a bag and shook it, it would make a sound.150 However, that does not mean the patent incentive was intended to be so limited. There is nothing in its history that definitively states that the patent incentive was ever limited to inventions of physical nature. While there are in the cases comments about patent eligibility made in the context of new industrial devices and new methods of using existing devices or substances, we do not see an underlying policy that seeks to tie the notion of invention to industrial technologies. Instead, the history patent law supports the development of mercantilist and developmental aims. Imposing a physicality requirement is in no way consistent with and does nothing to advance those aims.
Ⅳ.CONCLUSION
While the focus of the patent system has historically been on the production and manipulation of physical artefacts that are the domain of the industry, chemistry and engineering, the history of patent law and practice does not support the view that patent law‘s incentive function is in fact limited to promoting innovation in these fields. Instead, the history and incentive function of patent law support a broad view of patentable subject matter, free of artificial fetters such as a physicality requirement.
The history of the patent system has always been about creating incentives to innovate and bring new products and processes to market and to disclose new technologies to the public. The incentives have always been limited in duration to enable others to learn and use the technology without restriction once the
149 Agreement on Trade-Related Aspects of Intellectual Property Rights, art. 27(1), Dec. 15, 1993, 33 I.L.M. 81.
150 Robert P. Merges, As Many as Six Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform, 14 BERKELEY TECH L.J. 577, 585 (1999); Erik S.
Maurer, An Economic Justification for a Broad Interpretation of Patentable Subject Matter, 95 NW.U.L.REV. 1057, 1057 (2001) (―When people think of patented inventions they probably think about well-tooled, oily parts that make machines run – something they can put their hands on, weigh with dead reckoning, and intuitively understand.‖).
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exclusivity period has come to an end. This is entirely consistent with the notions that innovation is the production of new information, knowledge and ideas, and that technology is little more than the application of information or knowledge to do new things and it is the process of creating better and more useful information.
It is entirely consistent with the notion of information being an ordinary material good that is both an input and a product of the innovative process. Given the nature of innovation in the Information Age and the relationship it bears with the incentives to innovate and invest in innovation that patent law provides, it makes little sense to limit the scope of patentable subject matter by introducing a physicality requirement. Since the innovation promoted by the patent system is nothing more than the creation of new knowledge and ideas and is not contingent on the creation of new machines, physical devices and transformative methods, its progress will not be served well by limiting the scope of patentable subject matter to traditional manufacturing and physicality-based industrial technologies.