Document Type

Response or Comment

Publication Date

1917

Abstract

The extent to which courts will go in conceding patentability to a natural law, or principle of nature, is evidenced in the case of Minerals Separation Co. v. Hyde, 37 Sup. Ct. -, decided by the Supreme Court, December 11, 1916. It has always been more or less an axiom of patent law that the discovery of a principle of nature does not entitle the discoverer to a patent for it. The case usually thought of first as authority therefor, is that of Morton v. New York Eye Infirmary, 5 Blatch. 116, 2 Fisher 320. The patentees in that case had discovered that the inhalation of sulphuric ether would produce insensibility to pain. The ether itself was well known and the means by which the patentees induced it to the lungs was not new. It was the effect produced by its induction to the lungs which, alone, had been theretofore unknown. On this showing the court held the patent to be invalid, saying, "A discovery of a new principle, force, or law, operating, or which can be made to operate, on matter, will not entitle the discoverer to a patent." "The new force or principle brought to light must be embodied and set to work, and can be patented only in connection or combination with the means by which, or the medium through which, it operates." Another frequently cited case upon this proposition is that of O'Reilly v. Morse, 15 How. 62. The eighth claim of the patent involved in that case was for "the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however, developed for marking or printing intelligible characters, signs or letters at any distances, being a new application of that power of which I claim to be the first inventor or discoverer." This claim was held invalid, on the ground that it was too broad and did not describe any means by which the force was to be utilized.


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