Identifying an historically consistent view of the objects of the patent system is difficult due to the state of uncertainty that existed within English patent law until the mid-nineteenth century. It is reported that 150 years after the Statute of
84 Id. See also Federico, Origins and Early History of Patents, supra note 28, at 304; Hulme, On the History of Patent Law in the Seventeenth and Eighteenth Centuries, supra note 28, at 285; Pila, Inherent Patentability in Anglo-Australian Law, supra note 82, at 113.
85 Walterscheid, The Early Evolution of the United States Patent Law: Antecedents (Part 3), supra note 28, at 801.
86 (1795) 1 H Bl 463; 126 ER 651.
87 Boulton and Watt v. Bull (1795) 1 H Bl 463; 126 ER 651, 654 (CP). See also the judgment of Lord Chief Justice Eyre, who stated at 665 that, ‗[t]he modern cases have chiefly turned upon the specifications, whether there was a fair disclosure.‘ See also Attorney-General (Cth) v Adelaide Steamship Co [1913] AC 781, 793.
88 Turner v Winter (1787) 99 ER 127, 1276 (NP); R v Arkwright (1785) 1 Web Pat Cas 64, 66 (NP); Morgan v Seaward (1837) 1 Web Pat Cas 187, 196-197 (Ex); Liardet v. Johnson (1778) 1 Carp Pat Cas 35 (NP); Manton v Parker (1814) G 297 (NP); Hill v Thompson (1818) 129 ER 427; Lewis v Marling (1829) 1 Web Pat Cas 490 (NP); verdict aff‘d (1829) 1 Web Pat Cas 493 (KB).
89 Hulme, On the History of Patent Law in the Seventeenth and Eighteenth Centuries, supra note 28, at 287-88.
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Monopolies was enacted, the English patent registers were brimming with patents claiming processes, even though it was not clear whether these were patentable.90
One of the first judicial actions involving the scope of patentable subject matter was the 1795 decision of Boulton and Watt v. Bull. As patents were not litigated in the common law courts until the Privy Council authorized such suits in 1752, judicial interpretation of various aspects of patent law were essentially absent until Boulton and Watt v. Bull was handed down.91 This lack of judicial guidance as to the scope and content of the notion of ―manufacture‖ was acknowledged by Eyre CJ who said, ―Patent rights are no where, that I can find, accurately described in our books.‖92
At issue was the validity of patent in respect of a new method of using an existing steam engine devised by James Watt that lessening the consumption of steam and fuel.93 The invention was an improvement on existing steam engine technology. Watt‘s improvement was to have the condenser in a separate vessel from the steam cylinder. The method was described in the specification as the application of certain principles of nature in way to achieve its purpose.94
The bench of four were equally divided as to the patent‘s validity. Eyre CJ and Rooke J held the patent to be valid, while Heath and Buller JJ took the opposite view. For Heath and Buller JJ, it was the presence of a physical substance or object that was the basis of an invention being something other than an unpatentable abstract principle.95 In contrast, Eyre CJ considered that the expression ―any manner of new manufacture‖ used in the Statute of Monopolies bore a much wider meaning.
90 Boulton and Watt v. Bull (1795) 1 H Bl 463; 126 ER 651, 667 (CP) (Eyre CJ) (―Probably I do not over-rate it when I state that two-thirds, I believe I might say three-fourths, of all patents granted since the statute passed, are for methods of operating and of manufacturing, producing no new substances and employing no new machinery.‖); Walterscheid, The Early Evolution of the United States Patent Law: Antecedents (Part 1), supra note 28, at 856 (―As one of the earliest texts on the patent law stated in 1806: ‗most of the patents now taken out, are by name, for the method of doing particular things…‘‖.).
91 MacLeod, supra note 28, at 61. According to Mossoff, supra note 28, at 1262-1263 n 26, the prerogative court of Privy Council was invested with jurisdiction to heard patent disputes as early as 1562. Mossoff further records that Privy Council divested to the law courts jurisdiction over determining the validity of patents for inventions; thus putting into effect, albeit 130 years late, section 2 of the Statute of Monopolies.
92 Boulton and Watt v. Bull (1795) 1 H Bl 463; 126 ER 651, 665 (CP) (Eyre CJ). See also Wood v Zimmer (1815) 171 ER 162 (Gibbs CJ) (―The subject of patents for new inventions has not been treated with due precision, as a branch of law by itself, in any of our law books. It is only indeed within a few years that they have become so important a part of our commercial machinery.‖). The court reporter in Wood v Zimmer said that ―almost all of the learning and law on the subject of patents for new inventions‖ may be deduced from Boulton and Watt v. Bull and Hornblower v. Boulton.
93 Boulton and Watt v. Bull (1795) 1 H Bl 463; 126 ER 651, 667 (Eyre CJ).
94 Id. at 668.
95 Id. at 661 (Heath J), 662-663 (Buller J).
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While each of the judges agreed that there can be no patent for a mere principle, there were differences of opinion as to what this means. Chief Justice Eyre described a principle as being an ―abstract notion‖,96 as distinct from a
―practical manner of doing‖,97 while for Rooke and Buller JJ, it was an elementary truth of the arts and sciences.98 Heath J was alone in taking the view that the prohibition on patenting principles extends to preclude patenting methods of production and even patents on the application of a principle.99
The involvement of some physical substance was for Heath and Buller JJ the basis for determining whether a claimed invention is something more than a mere principle. According to Heath J, the term ―manufacture‖ is reducible to two physical classes: vendible machines or (chemical) substances.100 His Honor took the view that, unless the method resulted in a vendible machine or substance, the method was not patentable, and if it did so result, the patent would be for the vendible machine or substance and not the method.101 In this regard, His Honor opined that ―patents for chemical processes‖ are in truth ―for a vendible substance‖.102 Buller J took the same view, stating that the scope of patentable subject matter extends only as far as inventions embodied in mechanical and chemical forms.103
In contrast, Eyre CJ held that new manufactures are things made, the practice of making (thereby endorsing the patentability of processes), and principles reduced to practice in a new manner (thereby endorsing the patentability of non-physical processes).104 His Honor described ―the practice of making‖ broadly as to include ―any art producing effects useful to the public‖.105 Chief Justice Eyre noted that a patent for a method involving no new mechanism and producing no new result would necessarily be for the method itself, that is, for the ―method detached from all physical existence whatever‖.106 Thus, it is clear that his Honor did not favour a physicality requirement.
Instead, both the Chief Justice and Rooke J indicated that patent eligibility turns on a principle being reduced to a specific practical application capable of producing effects that are of benefit to the public.107 This is a position, which is as true today as it was then, that leaves open the possibility that non-physical
96 Id. at 667 (Eyre CJ).
97 Id.
98 Id. at 659 (Rooke J), 662 (Buller J).
99 Id. at 661 (Heath J).
100 Id. at 660-1.
101 Id. at 661.
102 Id.
103 Id. at 662-3.
104 Id. at 666.
105 Id. at 666.
106 Id. at 667.
107 Id. at 659-660 (Rooke J), 668 (Eyre CJ).
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inventions have being recognised as being patent eligible since the earliest judicial consideration of the subject matter eligibility standard.
Justice Rooke saw no difficulty with process patents or patents to improvements on existing technologies.108 By focusing on the mechanical nature of the improvement, he allowed the patent, having determined that the invention claimed is more than a mere principle. Rather, Rooke J considered the claimed invention to be a principle reduced to a practical application.109 His Honor said nothing to indicate that producing a physical effect or causing a physical transformation of matter is what distinguishes the abstract from the non-abstract.
James Watt‘s steam engine patent was re-litigated in an action on the case four years later in Hornblower v. Boulton.110 The court unanimously upheld the patent and confirmed the reasons and decision of Eyre CJ, rejecting any assertion that the patent claimed a philosophical principle.111 In that case Kenyon CJ broadly described a manufacture as being ―something made by the hands of man.‖112 Grose J was of a similar view finding that the patent was ―not a patent for a mere principle, but for the working and making of a new manufacture within the words and meaning of the statute.‖113
The distinction between patentable manufactures and unpatentable principles made in Boulton and Watt v Bull and Hornblower v. Boulton was confirmed in The King v Wheeler,114 a case which concerned a method of drying and preparing malt that involved no new machine. While the patent was declared void because the specification did not adequately describe the claimed
108 Id. at 659.
109 Id. at 659-660.
110 (1799) 8 TR 95; 101 ER 1285.
111 Id. at 1288 (Kenyon LCJ).
112 Id. (―But having now heard everything that can be said on the subject, I have no doubt in saying that this is a patent for a manufacture, which I understand to be something made by the hands of man.‖).
113 Id. at 1290-1 (Grose J). Watt‘s steam engine patent was extended for 25 years by an Act of Parliament in 1775: 15 Geo. III c. 61: An Act for vesting in James Watt, engineer, his executors, administrators, and assigns, the sole use and property of certain steam engines, commonly called fire engines, of his invention, described in the said Act throughout His Majesty‘s dominions, for a limited time.
114 (1819) 2 B & Ald 345; 106 ER 392. For further nineteenth century consideration of the distinction between patentable inventions and abstract ‗principles‘, see Househill Iron Co v Neilson (1843) 9 Cl & Fin 78; 8 ER 616, where the House of Lords confirmed the approach taken by Alderson B in Jupe v Pratt (1837) 1 Web Pat Cas 145 that all abstract principles may be patentable, subject to their having been directed to a practical application (which was described as being having been ‗turned to account‘ through ‗direction to the actual business of human life‘). The House of Lords drew a distinction between an abstract principle and the same principle when connected with some ‗special purpose or practical operation‘, which was capable of supporting a patent. Only when an abstract principle had been ‗clothed with the language of practical application‘ could it be regarded as ‗an invention, in the patent law sense of the term‘.
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invention,115 Abbott CJ gave some consideration to the concept of manufacture, which he set out in the following way.
Now the word ‗manufactures‘ has been generally understood to denote either a thing made, which is useful for its own sake, and vendible as such, as a medicine, a stove, a telescope, and many others, or to mean an engine or instrument, or some part of an engine or instrument, to be employed, either in the making of some previously known article, or in some other useful purpose, as a stocking frame, or a steam engine for raising water for mines. Or it may perhaps extend also to a new process to be carried on by known implements, or elements, acting upon known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner, or of a better and more useful kind. But no merely philosophical or abstract principle can answer to the word ‗manufactures‘. Something of a corporeal and substantial nature, something that can be made by man from the matters subjected to his art and skill, or at the least some new mode of employing practically his art and skill, is requisite to satisfy this word.116
From this statement it is clear his Honor considered the distinction between patentable subject matter and an unpatentable philosophical or abstract principle as involving something other than a physicality requirement. His Honor gave three distinct examples of patentable subject matter, namely, ―Something of a corporeal and substantial nature‖, ―something that can be made by man from the matters subjected to his art and skill‖ and ―or at the least of some new mode of employing practically his art and skill‖.117 By his Honor‘s use of the conjunction
‗or‘ it is clear that these three examples are alternatives, rather than an aggregate.
It is the inclusion of the last of these examples which indicates that his Honor considered that the concept of manufacture might extend beyond things of
―corporeal and substantial nature‖ such as processes devoid of physical elements.
While the differences in opinion in the various judges deciding these matters is understandable, it did lead to a degree of uncertainty. This uncertainty surrounding the content and scope of patent law in England at that time is reflected in the drafting of the United States patent laws. Accordingly, those creating the United States patent system sought to induce clarity in the drafting of statutes to avoid what was perceived to be a narrowness in the English view as to patentable 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 the is no place for a physicality requirement in the scope of patentable subject matter, and that a lack of physical embodiment in an invention
115 Id. at 351-2.
116 Id. at 394-5.
117 Id.
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is not to be equated with a claimed invention being a mere abstract or philosophical principle.
Interestingly, despite the finding in Hornblower v. Boulton, it was not until the 1842 decision of Crane v Price, that the patentability of methods or processes was regarded as being undeniably confirmed.118