microorganisms produced by recombinant DNA technology may be
1. Diamond v. Chakrabarty
Brief Fact Summary.
Chakrabarty (Plaintiff) sought to patent a live, man-made
microorganism.
Synopsis of Rule of Law.
A live, man-made microorganism is a non-naturally occurring
composition and therefore may be patented.
Facts.
Chakrabarty (Plaintiff) developed a new species of bacterium capable
of metabolizing hydrocarbons in a manner unknown in naturally
occurring organisms using recombinant DNA processes. The
microorganisms exhibited great promise in the treatment of oil
spills. Plaintiff applied for a patent, which was denied by the Patent
Office (Defendant) on the basis that the microorganisms were
products of nature and therefore unpatentable. The Board of Appeals
affirmed. The Court of Customs and Patent Appeals reversed, and
the United States Supreme Court granted review.
Issue. May a live, man-made microorganism be patented?
Held.
(Burger, C.J.) Yes. A live, man-made microorganism is a non-
naturally occurring composition and therefore may be
patented. Resolution of this issue is, regardless of its philosophical
implications, strictly a matter of statutory construction. The relevant
statute here, 35 U.S.C. § 101, defines as patentable any new and
useful “manufacture” or “composition of matter,” among other
things. It is a basic rule of construction that words are given their
natural, ordinary meanings. There can be little doubt that
said to be manufactured and to be compositions of matter. For
purposes of patent law, the fact they are alive is not relevant. Although
it is true that naturally-occurring products may not be patented, a
genetically-engineered microorganism is not naturally
occurring. While this Court recognizes that recombinant DNA
technology is a controversial field, it is ill-equipped to balance the
competing values and interests manifested therein; this is a task for
Congress. Since the patent laws clearly include materials such as are
at issue here within their scope, and no specific law exists to exclude
it, the only appropriate holding is that recombinant DNA-produced
microorganisms are patentable. Affirmed.
Dissent.
(Brennan, J.) Congress, in enacting the Plant Patent Act in 1930 and
the Plant Variety Protection Act in 1970, has indicated that bacteria
are excluded from patentability. Patent protection must not be
extended further than Congress intended. Congress has not left a
legislative vacuum regarding the type of patent at issue. The Plant
Patent Act gives patent protection to developers of certain asexually
reproduced plants. The Plant Variety Protection Act extends
protection to certain new plant varieties capable of sexual
reproduction. Therefore, contrary to the majority’s assertion, the
patent at issue does not pose the problem of “unanticipated
inventions.” In these two Acts, Congress has addressed the general
problem of patenting animate inventions and has chosen carefully
limited language granting protection to some kinds of discoveries, but
specifically excluding others. These Acts show strong evidence of a
congressional limitation that excludes bacteria from patentability. The
Acts evidence Congress’s understanding, at least since 1930, that
§101 does not include living organisms. If newly developed living
organisms not naturally occurring had been patentable under §101,
the plants included in the scope of the 1930 and 1970 Acts could have
been patented without new legislation. Therefore, Congress believed
that it had to legislate in order to make agricultural “human-made
inventions” patentable, and, because the legislation Congress
enacted is limited, it follows that Congress never intended to make
items outside the scope of the legislation patentable.
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Discussion.
The general rule is that things occurring naturally in the universe may
not be patented. Neither a type of plant occurring naturally nor a
natural principal could be patented. The laws of motion could not have
been patented by Newton. This legal principle appears
straightforward, but as demonstrated by this case, modern science
has made it less so.
2. ASSOCIATION FOR MOLECULAR PATHOLOGY ET AL. v.
MYRIAD GENETICS,
Facts:
Respondent Myriad Genetics, Inc. (Myriad), obtained several patents
after discovering the precise location and sequence of the BRCA1 and
BRCA2 genes, mutations of which can dramatically increase the risk
of breast and ovarian cancer. This knowledge allowed Myriad to
determine the genes’ typical nucleotide sequence, which, in turn,
enabled it to develop medical tests useful for detecting mutations in
these genes in a particular patient to assess the patient’s cancer risk.
If valid, Myriad’s patents would give it the exclusive right to isolate an
individual’s BRCA1 and BRCA2 genes and would give Myriad the
exclusive right to synthetically create BRCA cDNA. Petitioners filed
suit, seeking a declaration that Myriad’s patents are invalid.
Issue: WON Myriad’s patents are invalid
Held: A naturally occurring DNA segment is a product of nature andnot
patent eligible merely because it has been isolated, but cDNA
ispatent eligible because it is not naturally occurring.
(a) The Patent Act permits patents to be issued to “[w]hoever invents
or discovers any new and useful . . . composition of matter,”, but “laws
of nature, natural phenomena, and abstract ideas”“ ‘are basic tools of
scientific and technological work’ ” that lie beyondthe domain of patent
protection, Mayo, supra, at ___. The rule against patents on naturally
occurring things has limits, however. Patent protection strikes a
delicate balance between creating “incentives that lead to creation,
invention, and discovery” and “imped[ing]the flow of information that
might permit, indeed spur, invention.” Id., at ___. This standard is used
to determine whether Myriad’s patents claim a “new and useful . . .
composition of matter,” orclaim naturally occurring phenomena.
Myriad’s DNA claim falls within the law of nature exception.Myriad’s
principal contribution was uncovering the precise locationand genetic
sequence of the BRCA1 and BRCA2 genes. Diamond v. Chakrabarty,
447 .U. S. 303, is central to the patent-eligibility inquirywhether such
action was new “with markedly different characteristics from any found
in nature,”. Myriad did not create oralter either the genetic information
encoded in the BCRA1 andBCRA2 genes or the genetic structure of
the DNA. It found an important and useful gene, but groundbreaking,
innovative, or evenbrilliant discovery does not by itself satisfy the
inquiry.
3. D'ARCY V MYRIAD GENETICS INC
[2015] HCA 35 7 October 2015
FACTS
The BRCA1 gene, when mutated, is thought to be responsible for at
least 80% of cases of familial breast and ovarian cancers. Myriad
Genetics Inc (Myriad) succeeded in isolating the nucleic acid of the
BRCA1 gene from the environment in which it naturally occurs in
human cells, allowing screening for the mutations, and was granted a
patent in Australia.
Breast cancer survivor Yvonne D'Arcy sought to invalidate claims 1 to
3 of Myriad's patent, which covered isolated nucleic acids.
The basis of the challenge was that claims 1 to 3 did not satisfy the
test for patentable subject matter under Australian law.
On 7 October 2015, the High Court of Australia unanimously
allowed Ms D’Arcy’s appeal from the Full Federal Court decision
in D’Arcy v Myriad Genetics Inc (2014) 224 FCR 479 (‘D’Arcy’),
holding that Myriad’s claims to isolated nucleic acids were not
patentable subject matter.
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The decision relates to Australian Patent 686004, which includes
claims to methods of diagnosing a predisposition for breast and
ovarian cancer, as well as claims to isolated nucleic acids related to
those methods. The claims to the methods, probes, cloning and
expression vectors, and host cells, were not in issue. However the
patentability of isolated nucleic acids was disputed.
ISSUE: Whether or not claims directed to isolated nucleic acids were
a “manner of manufacture”, and therefore patentable subject matter.
RULING:
NO, The High Court of Australia unanimously decided
that all of these claims did not consist of a manner of
manufacture and thus not patentable.
In order to be patentable, the claimed invention must be "a manner of
manufacture within the meaning of section 6 of the Statute of
Monopolies" (section 18(1)(a) of the Patents Act). Since the Statute of
Monopolies is an English statute dating back to 1623, Australian
courts have had to stretch the meaning of this phrase to keep up with
technological developments. In the Myriad case, the High Court has
held that this phrase can only be stretched so far.
The High Court held that the Federal Court's earlier decisions were
based on an unduly narrow characterisation of the effect of the
decision in NRDC, the key High Court authority on the "manner of
manufacture" concept. In that case, two key elements in determining
whether an alleged invention is a "manner of manufacture" were
whether the invention:
1. Resulted in an "artificially created state of affairs"; and
2. Produced an economically useful result.
In the Myriad case, the High Court held that these two
requirements are not a mechanistic test conferring a presumption of
patentability. If these two criteria are met, the subject matter may be
patentable, but other relevant factors must be considered, in
particular:
 Consistency with the purposes of the Act – including whether
allowing patentability:
a) "could give rise to a large new field of monopoly
protection with potentially negative effects on
innovation";
b) "could… have a chilling effect on activities beyond
those formally the subject of the exclusive rights
granted to the patentee" – for example, the High
Court specifically refers to the risk of inhibiting
researchers;
c) "would involve the court in assessing important and
conflicting public and private interests and purposes";
 "The coherence of the law relating to inherent patentability";
and
 Whether the extension of patentability to the particular
subject matter "would involve law-making of a kind which
should be done by the legislature".
The international context, including interaction with patent law in other
jurisdictions and Australia's international obligations, was also a
relevant consideration.
The concern about the potential "chilling effect" on research activities
is surprising given that the Australian Parliament recently introduced
a statutory defense to infringement for experimental research. In fact,
it could be said the High Court's decision strays into territory that many
would regard as the province of the legislature. Indeed, this was a
point made by the special five member appeal bench of the Federal
Court.
Myriad's patent at the boundary of Australian patent law
An isolated nucleic acid, as claimed in Myriad's patent, is a sequence
of nucleotides derived from DNA or RNA that has been removed from
its naturally occurring cellular environment. It is obtained by
processes involving extraction and purification of the DNA from the
cell (importantly, these are known processes and did not form part of
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the claimed invention). The isolated nucleic acid bears the DNA use of the abstract concept of a neutral intermediary to facilitate
sequence of the molecule that existed within the cellular environment, exchange and eliminate risk. The U.S. Court of Appeals for the
but is no longer part of the structure that fits within the cell nucleus. All Federal Circuit affirmed.
of the nucleic acids claimed in the patent will possess a gene
sequence or portion of a sequence, either derived from or substantially Issue: Are claims regarding computer-implemented inventions—
similar to that of a natural BRCA1-encoding gene. including systems, machines, processes, and items of manufacture—
patent-eligible subject matter?
The High Court held that, when the proper emphasis is placed on the
Held: No. Justice Clarence Thomas wrote the opinion for the
role of genetic information in the claims, the Myriad claims were at the
boundary of the concept of manner of manufacture. Even though unanimous Court. The Court held that patent law should not restrain
what was claimed was a result of human endeavor, to include it in abstract ideas that are the "building blocks of human ingenuity" and
patentable subject matter would involve an extension of the concept held all of Alice's claims ineligible for patent protection. Because using
which was "inappropriate for judicial determination" a third party to eliminate settlement risk is a fundamental and prevalent
practice, it is essentially a building block of the modern economy. The
4. Alice Corp vs CLS Bank Court held that Alice's claims did no more than require a generic
computer to implement this abstract idea of intermediated settlement
Facts: Alice Corporation (Alice) is an Australian company that owns by performing generic computer functions, which is not enough to
the '479, '510, '720, and '375 patents, all of which have to do with a transform an abstract idea into a patent-eligible invention.
computerized trading platform that deals with financial transactions in
which a third party settles obligations between two others so as to Justice Sonia M. Sotomayor wrote a concurring opinion in which she
settlement eliminate risk. Settlement risk is the risk to each party in an argued that any claim that merely describes a method of doing
exchange that only one party will pay its obligation. Alice's patents business should not be patentable. In this case, Justice Sotomayor
address that risk by using the third party as the guarantor. agreed that the method claims at issue pertained to an abstract idea.
Justice Ruth Bader Ginsburg and Justice Stephen G. Breyer joined
On May 24, 2007, CLS Bank International (CLS) sued Alice and the concurrence.
sought a declaratory judgment of non-infringement and invalidity of the
'479, '510, and '720 patents. Alice countersued and claimed
infringement. CLS moved for summary judgment by arguing that any
possible infringement could not have occurred in the United States
and that Alice's claims were drawn from ineligible subject matter. Alice
filed crossmotions, and the district court denied both motions. In the
meantime, the '375 patent processed, and Alice amended its
complaint to include this patent. Both parties renewed their
crossmotions. For the purposes of these motions, the district court
assumed that all asserted patent claims required electronic
implementation and granted summary judgment in favor of CLS. The
district court held that Alice's patents were invalid because they were
directed at an abstract idea and that those claims could preempt the

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5. ANGELITA MANZANO VS COURT OF APPEALS
G.R. NO. 113388
September 5, 1997
PONENTE: Bellosillo, J.
FACTS:
Petitioner Manzano filed with Philippine Patent Office an action for the
cancellation of Letters Patent for a gas burner registered in the name
of private respondent Madolaria who subsequently assigned the same
to private respondent United Foundry. Petitioner alleged that the utility
model covered by the letters patent was not inventive, new, or useful,
the specification did not comply with the requirements of R.A. No. 165,
that respondent was not the original, true, and actual inventor nor did
she derive her rights from the same, and that respondent was guilty of
fraud or misrepresentation in applying for the letters patent.
Petitioner also alleged that the utility model in question had already
been in use and on sale (petitioner herself being a distributor/seller of
the said gas burners) in the Philippines for more than one year before
the respondent filed for the application. Petitioner presented two
undated brochures of two different Gas companies (Manila Gas Corp.
& Esso Gasul) which allegedly depicts an identical gas burner as the
one covered in respondent’s letters patent. Respondent presented her
husband as lone witness to testify that respondent, thru complaints of
customers, devised a way to solve the defects in the gas burners, and
respondent’s innovation is now the subject of the letters patent.
The Director of Patents denied the petition for cancellation, which was
affirmed by the CA, on the ground that petitioner was not able to
convincingly establish that the patented utility model was not novel.
Petitioner failed to overcome her burden and overturn the presumption
of legality of the issuance of letters patent and that respondent
withheld material facts with intent to deceive which, if disclosed, would
have resulted in the refusal by the PPO to issue the letters patent.
Hence, this appeal.
ISSUE: WON the CA erred in upholding the decision of the Director of
Patents.
RULING: NO. In issuing Letters Patent to respondent Madolaria for
an LPG Burner, the PPO found her invention novel and patentable.
The issuance of such patent creates a presumption which yields only
to clear and cogent evidence that the patentee was the original and
first inventor. The burden of proving want of novelty is on him who
avers it and the burden is a heavy one which is met only by clear and
satisfactory proof which overcomes every reasonable doubt.
As found by the Director of Patents, the standard of evidence sufficient
to overcome the presumption of legality of the issuance of letters
patent to respondent Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. The findings and conclusions
of the Director of Patent were reiterated and affirmed by the Court of
Appeals. The rule is settled that the findings of fact of the Director of
Patents, especially when affirmed by the Court of Appeals, are
conclusive on this Court when supported by substantial evidence.
The validity of the patent issued by the PPO in favor of private
respondent and the question over the inventiveness, novelty and
usefulness of the improved model of the LPG burner are matters which
are better determined by the PPO. The technical staff of the Philippine
Patent Office composed of experts in their field has by the issuance of
the patent in question accepted private respondents model of gas
burner as a discovery. There is a presumption that the Office has
correctly determined the patentability of the model and such action
must not be interfered with in the absence of competent evidence to
the contrary.
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6. ROSARIO C. MAGUAN vs. COURT OF APPEALS G.R. L-45101,
November 28, 1986, SECOND DIVISION, PARAS, J.
Petitioner Rosario C. Maguan is doing business under the firm name
and style of “SWAN MANUFACTURING" while private respondent
Susana Luchan is likewise doing business under the firm name and
style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING."
The petitioner informed private respondent that the powder puffs the
latter is manufacturing and selling to various enterprises particularly
those in the cosmetics industry, resemble identical or substantially
identical powder puffs of which the former is a patent holder under
Registration Certification Nos. Extension UM-109, Extension UM-110
and Utility Model No. 1184; petitioner explained such production and
sale constitute infringement of said patents and therefore its
immediate discontinuance is demanded, otherwise it will be compelled
to take judicial action.
Private respondent replied stating that her products are different and
countered that petitioner's patents are void because the utility models
applied for were not new and patentable and the person to whom the
patents were issued was not the true and actual author nor were her
rights derived from such author. Maguan filed a complaint for damages
with injunction and preliminary injunction against Luchan with the then
Court of First Instance of Rizal.
The trial court issued an Order granting the preliminary injunction
prayed for. Consequently, the corresponding writ was subsequently
issued. It having denied the Motion for Reconsideration, the private
respondent filed a petition for certiorari before the Court of Appeals.
The Preliminary injunction issued by the trial court was affirmed by the
CA but it later on dismissed the petition and set aside the preliminary
injunction previously issued by the trial court.
ISSUE: Whether Maguan has a right to file an action before the CFI
for injunction due to infringement of her patent.
HELD:
When a patent is sought to be enforced, the questions of invention,
novelty or prior use, and each of them, are open to judicial
examination. Under the present Patent Law, there is even less reason
to doubt that the trial court has jurisdiction to declare the patents in
question invalid. A patentee shall have the exclusive right to make,
use and sell the patented article or product and the making, using, or
selling by any person without the authorization of the patentee
constitutes infringement of the patent (Sec. 37, R.A. 165).
Any patentee whose rights have been infringed upon may bring an
action before the proper CFI now (RTC) and to secure an injunction
for the protection of his rights (Sec. 42, R.A. 165). The burden of proof
to substantiate a charge of infringement is with the plaintiff. But where
the plaintiff introduces the patent in evidence, and the same is in due
form, there is created a prima facie presumption of its correctness and
validity. The decision of the Commissioner (now Director) of Patent in
granting the patent is presumed to be correct.
The burden of going forward with the evidence (burden of evidence)
then shifts to the defendant to overcome by competent evidence this
legal presumption. The question then in the instant case is whether or
not the evidence introduced by private respondent herein is sufficient
to overcome said presumption. Respondent Court of Appeals was
satisfied that there is a prima facie showing of a fair question of
invalidity of petitioner's patents on the ground of lack of novelty.
As pointed out by said appellate court said evidence appeared not to
have been considered at all by the court a quo for alleged lack of
jurisdiction, on the mistaken notion that such question is within the
exclusive jurisdiction of the patent office. It has been repeatedly held
that an invention must possess the essential elements of novelty,
originality and precedence and for the patentee to be entitled to
protection, the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a
patentee for more than two years (now for more than one year only
under Sec. 9 of the Patent Law) before the date of his application for
his patent, will be fatal to, the validity of the patent when issued.
SEC. 9. Invention not considered new or patentable. — An invention
shall not be considered new or capable of being patented if it was
known or used by others in the Philippines before the invention thereof
by the inventor named in an application for patent for the invention; or
if it was patented or described in any printed publication in the
Philippines or any foreign country more than one year before the
application for a patent therefor; or if it had been in public use or on
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sale in the Philippines for more than one year before the application from continuing the manufacture and sale of the same kind of
for a patent therefor; or if it is the subject matter of a validity issued machines.
patent in the Philippines granted on an application filed before the filing
of the application for patent therefor. Issue:
Thus, more specifically, under American Law from which our Patent
Held:
Law was derived it is generally held that in patent cases a preliminary
We agree with the trial court that, strictly speaking, the hemp stripping
injunction will not issue for patent infringement unless the validity of
machine of the plaintiffs does not constitute an invention on the ground
the patent is clear and beyond question.
that it lacks the elements of novelty, originality and precedence.
The issuance of letters patent, standing alone, is not sufficient to
support such drastic relief. In cases of infringement of patent no In fact, before the plaintiffs herein obtained their patent, they
preliminary injunction will be granted unless the patent is valid and themselves had already publicly used the same kind of
infringed beyond question and the record conclusively proves the machine for some months, at least, and, various other machines,
defense is sham. For failure to determine first the validity of the patents having in general, the same characteristics and important parts as that
before aforesaid issuance of the writ, the trial court failed to satisfy the of the said plaintiffs, were known in the Province of Davao.
two requisites necessary if an injunction is to issue, namely: the
existence of the right to be protected and the violation of said right. Machines known as Molo, Riesgo, Crumb, Icsiar, Browne and McFie
were already known in that locality and used by the owners of hemp
plantations before the machine of the plaintiffs came into existence. It
7. PATRICK HENRY FRANK and WILLIAM HENRY
may also be noted that Adrian de Icsiar applied for a patent on an
GOHN vs. G. KOSUYAMA
invention which resulted in the rejection by the United States Patent
Facts: Office of the plaintiffs' original application for a patent on the so-called
"spindle" or conical drum which was then in actual use in the Dringman
The action was based upon alleged infringement by the defendant of and Icsiar hemp stripping machines.
the rights and privileges acquired by the plaintiffs over the aforesaid
patent through the manufacture and sale by the former of machines The def endant cannot be made civilly liable for alleged infringement
similar to that covered by the aforesaid patent. of the patent on which the action is based on the ground that the
machines manufactured and sold by him did not have any essential
Patent No. 1519579 on improvement in hemp stripping machines, part unknown to the public in the Province of Davao at the time the
issued by the United States Patent Office, and registered in the plaintiffs applied for and obtained their patent for improved abaca
Bureau of Commerce and Industry of the Philippine Islands on March stripping machines.
17, 1925, was the origin of this action brought by the plaintiffs herein
who prayed that judgment be rendered against the defendant,
ordering him thereby to refrain immediately from the manufacture and
sale of machines similar to the one covered by the patent; to render
an accounting of the profits realized from the manufacture and sale of
the machines in question; that in case of refusal or failure to render
such accounting, the defendant be ordered to pay the plaintiffs the
sum of P60 as profit on each machine manufactured or sold by him;
that upon approval of the required bond, said defendant be restrained
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G.R. No. L-32160 January 30, 1982
8. Aguas vs. De Leon
Facts:
Conrado G. de Leon filed a complaint for infringement of patent
against Domiciano A. Aguasand F. H. Aquino and Sons alleging that
being the original first and sole inventor of certain newand useful
improvements in the process of making mosaic pre-cast tiles. He
claims that Aguasinfringed his patent by making, using and selling tiles
embodying said patent invention and that Aquino & Sons is guilty of
infringement by making and furnishing to
the defendant Aguas theengravings, castings and devices designed
and intended of tiles embodying De Leon’ spatented invention; that he
has given direct and personal notice to the defendants of their saidacts
of infringement and requested them to desist, but nevertheless,
defendants have refused and neglected to desist and have
disregarded such request, and continue to so infringe causing great
and irreparable damage to plaintiff;
Aguas on the other hand contended that plaintiff’s patent for the
process of making mosaic pre-cast tiles is invalid because said
alleged process is not an invention or discovery as the same has
already been used by tile manufacturers both abroad and in this
country. Trial court favored De Leon, an appeal was brought to CA
which affirmed the same. Hence this petition was filed by Aguas.
ISSUE: Whether or not a process pertaining to an improvement of the
old process of tile making is patentable; and if such, was there an
infringement?
RULING:
De Leon never claimed to have invented the process of tile-making.
Although some of the steps or parts of the old process of tile making
were described therein, there were novel and inventive features
mentioned in the process. The records disclose that de Leon's process
is an improvement of the old process of tile making.
The tiles produced from deLeon's process are suitable for construction
and ornamentation, which previously had not been achieved by tiles
made out of the old process of tile making. De Leon's invention has
therefore brought about a new and useful kind of tile. DE Leon’s
improvement is indeed inventive and goes beyond the exercise of
mechanical skill. He has introduced a new kind of tile for a new
purpose. He has improved the old method of making tiles and pre-cast
articles which were not satisfactory because of an intolerable number
of breakages, especially if deep engravings are made on the tile. He
has overcome the problem of producing decorative tiles with deep
engraving, but with sufficient durability.
Durability in spite of the thinness and lightness of the tile, is assured,
provided that a certain critical depth is maintained in relation to the
dimensions of the tile.
What is in issue here is the process involved in tile making and not the
design, the process and/or improvement is indeed patentable. As
shown by the facts, both the trial court and the Court of Appeals found
as a fact that the petitioner Domiciano A. Aguas did infringe de Leon’s
patent by making, using and selling tiles embodying said patent
invention.
Decision appealed from is affirmed.
9. Graham v. John Deere Co
Brief Fact Summary. John Deere (Defendant) defended an
infringement action on grounds of obviousness.
Synopsis of Rule of Law. A case-by-case analysis of the scope and
content of the prior art, the differences between the prior art and the
claims at issue, as well as the level of ordinary skill in the applicable
art, are required to determine the non-obviousness of a claimed
invention as to a prior art.
Facts. Graham (Plaintiff) filed suit against Defendant claiming patent
infringement on a device which consisted of old mechanical elements
that absorbed shock from plow shanks as they plowed through rocky
soil. In a prior case, The Fifth Circuit held that a patent was valid,
ruling that a combination was eligible for patent when it produced an
"old result in a cheaper and otherwise more advantageous way." The
Eighth Circuit said the patent was invalid in the present case as there
was no new result or combination. Plaintiff petitioned for certiorari,
Page 8|9
and the Supreme Court granted the request in order to resolve the judicial interpretation of this Act was still open to question, as shown
conflict. in the above decision.

Issue: Is a case-by-case analysis required of the scope and content of

the prior art, the differences between the prior art and the claims at
issue, as well as the level of ordinary skill in the applicable art to
determine the non-obviousness of a claimed invention as to prior art?

Held.

(Clark, J.) Yes. A case-by-case analysis of the scope and content of

the prior art, the differences between the prior art and the claims at
issue, as well as the level of ordinary skill in the applicable art are
required to determine the non-obviousness of a claimed invention as
to a prior art. The statutory non-obviousness requirement was added
by the Patent Act of 1952. However, this was just a codification of the
judicial precedent set forth in Hotchkiss v. Greenwood, 11 How. 248
(1851). Although the term "non-obviousness" is used instead of
"invention," in § 103 of the Act, the general level of improvement and
originality needed in order to sustain a patent did not change. In order
to determine whether an invention is eligible for patent or is only an
obvious improvement to a prior art requires a case-by-case analysis
of the criteria listed above. Commercial success, long-felt but
unsolved needs, and the failure of others are secondary
considerations that may also be relevant in considering the
obviousness of an invention. Regarding the patent at issue in these
cases, the differences between the patented invention and prior art
would have been obvious to one reasonably skilled in the art. The
patent is therefore invalid. Affirmed.

Discussion. Dissatisfaction with the Supreme Court"s increasingly

strict standard of "invention" led to the writing of the 1952 Patent
Act. There was also much criticism regarding the application of the
test which led to different judicial decisions with subjective and
inconsistent determinations. Congress omitted the word "invention" in
the Act on purpose so that no past requirements would be referred
to. Instead, Congress codified the hundreds of different ways the case
law doctrine had been read into a single statutory form. However,

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