The World, Patent No 5,674,892

1
The World, Patent No. 5,674,892:

The Nature of the Natural in U.S. Patent Law
Charles J. Sentell
Department of History and Philosophy of Science and Medicine
University of Cambridge
M.Phil. Dissertation
13 June 2005
For good or ill, the relentless logic of capitalism is remarkably proficient at seeking out and
achieving new markets where they once did not exist. A central factor in the success of these
new markets, however, depends upon finding ways in which to creatively commodify and
propertize the objects that will constitute the currency of each new market sphere. In the last
thirty years, two such markets have emerged through the developments in the digital
computer and agro-biochemical technologies. The silicon-chip and biotech revolutions,
respectively, gave birth to two new industrial sectors that have, in the time since their
founding discoveries several decades earlier, become staple features in the global
“information-” or “knowledge-based” economies. Not only do these new economies rely
heavily upon science and technology, but they also rely on a very specific “socially-shaped,
economically-embedded arrangement of science and technology.”1 These arrangements
created the possibility for the formation of these industries, and, as they entered the global
marketplace, the legal structures that sustained them had to find global mechanisms of
enforcement. In 1995, under the auspices of the World Trade Organization (WTO), the
international community ratified the most ambitious and expansive reforms of intellectual
property standards in history. Driven primarily by U.S. corporate interests, the Agreement on
Trade-Related Aspects of Intellectual Property (TRIPS) set global minimum standards for all
members of the WTO and provided global mechanisms of enforcing those rights.2
In their current form, neither the biotech nor the silicon-chip industries would be
possible without intellectual property in general, and patents in particular. Patents create
both the necessary objects of property and the requisite structures of protection for sustaining
new markets in what are often unobservable or theoretical entities, processes and products.
Due to the intimate extent to which these new technologies remain connected to the bodies of
scientific knowledge that created them, the propertization required to sustain the respective
technology’s market has inevitably encroached into the realm of the sciences, a realm
1
Pestre (2005a), pg. 2
2
Drahos with Braithwaite (1999)
2
traditionally excluded from patent and intellectual property protection. This “creeping
propertization” of science has initiated a wide-ranging debate among jurists, scientists, and
other academics, as well as major players in the global business and non-governmental
sectors.3 This debate involves a complex set of legal, ethical, and economic arguments over
the extent to which it is appropriate for basic scientific knowledge and know-how to be
propertized through the patent system.4
Complicating this picture is the fact that one of the traditional homes of basic
scientific knowledge – the university – has, since the middle of the nineteenth-century,
steadily strengthened its relationship with the private industrial sector.5 There once was, for
example, an exemption from paying license fees on patented materials intended solely for
research, academic or experimental purposes. This exemption was especially important for
university researchers, as it allowed academic scientists to utilize important new technologies
in their cutting edge research without being encumbered by excessive licensing costs. In
2003, however, the U.S. Federal Circuit Court ruled that universities were not eligible for this
exemption precisely because the business of the university is research and knowledge
production, and therefore the use of patented items furthered the university’s legitimate
business objectives.6 In 1980, moreover, the U.S. Congress passed the Bayh-Doyle Act,
which allowed universities and federally funded research projects in the U.S. to pursue
private intellectual property protection for their discoveries and inventions, even though they
are financed with public funds.7 This was no small amount of research either, as
approximately 75% of all research was and is funded by the federal government and publicly
funded universities.8
Those who regard these recent trends as unproblematic, then, have the key advantage
of a legal system that already grants intellectual property protection for a wide variety of
scientific products and processes. Moreover, this trend shows no sign of abating, moving
toward extending such protection to newer areas of knowledge and technology rather than
restricting it. In recent years, for example, decisions by legislatures, patent offices, and
courts have reinterpreted key components of the law so as to grant intellectual property
3
Merges (1996), pg. 147
4
Cf. Eisenberg (1989); Zuckerman (1988); Drahos (1999); Eisenberg and Nelson (2002); Drahos and
Mayne (2002)
5
Cf. Krimsky (1991), Ch. 1-3
6
John M. J. Madey v. Duke University 307 F.3d 1351; Jaffe and Lerner (2004), pg. 66
7
Nelkin (1984), pg. 76
8
Landes and Posner (2003), pg. 306
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protection for such things as fragments of the human genome and genetically modified plants
and animals. Coincidentally, in the same year the Bayh-Dole Act passed, the U.S. Supreme
Court handed down its landmark decision, Diamond vs. Chakrabarty, which is cited as
clearing the legal way for the development of the biotech industry by declaring “anything
under the sun made by man” is eligible for patent protection.9 But regardless of where one
falls in debate over the propertization of science, the important point to notice is that there is
something about the nature scientific knowledge itself that makes its propertization
problematic. In the U.S., this problematic character finds its legal expression in the
“products of nature” doctrine, which is a doctrine within the case law that excludes from
patentability natural products and processes, as well as basic scientific and mathematical
knowledge.
Due to concurrent developments in the realm of scientific practice and the global
knowledge economy, the body of case law dealing with the “products of nature” doctrine has
undergone a significant devolution. These developments have undermined the doctrine’s
conceptual footing and practical efficacy, so much so that some observers have eulogised its
demise in general.10 My claim in this essay, however, is that the concepts underlying the
“products of nature” doctrine are absolutely fundamental to any system of patents. Thus, if
the doctrine is as conceptually defunct as some claim, it should give us pause with regard to
the aims, efficacy, and consequences of the patent system more generally. As one astute
observer has noted:
Although the history of intellectual property rights in the West is replete with instances of
redefinition and reinterpretation in response to pressures to accommodate or advance the
economic interests of those most affected by the laws, many of the structure’s gross
features continue to reflect the remote historical circumstances in which they originated.
These legacies from the past should not be ignored, nor should their problematic aspects
in contemporary contexts be minimized.”11
The “products of nature” doctrine is precisely one of these instances. The way in which “the
natural” is construed within the case law has changed significantly over time, affecting both
the range of potentially patentable subject matter, as well as the justifications for patents
more generally.
9
206 USPQ 193 (Sup. Ct. 1980)
10
Davis (1995), pg. 330
11
David (1993), pg. 44
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In the first section of this essay, I provide the basic background knowledge for
understanding patents and the legal systems surrounding them. My argument here is that
patents are important scientific and technical artefacts and should studied as such. More
specifically, the way in which certain distinctions are related and negotiated within patent law
is crucial to defining the scope of patentable subject matter. In the next section, I turn to
examine how one such distinction, namely, the natural and the artificial, has developed in
U.S. case law. My claim here is that by looking at the three basic strands of the “products of
nature” doctrine two things become evident. First, at the heart of the doctrine there sits a
very particular ideology of scientific knowledge, which holds that such knowledge is an
unmediated reflection of the way the world really is, that our scientific understandings
capture nature in an unmediated, “given” sort way. The second point follows from this and is
simply that, as this doctrine has developed, a fundamental conceptual tension has formed
between the different strands of law. Finally, in the third section, I analyse how the particular
visions of science that were and are constitutive of the “products of nature” doctrine fit into
the various justificatory schemes for patents. My argument here, in other words, turns upon
recognizing how the legal construal of “the natural” affects the justifications for the scope of
patentable subject matter. My thesis is that changes in this construal undermine the
justifications for excluding “products of nature” from patentability.
In this essay, my analysis will focus on the development of this doctrine in U.S. case
law. This is for two reasons. First, U.S. case law provides a limited, but explicit, set of
rulings that highlight the various aspects of this doctrine. This approach allows me to
examine the development of the “products of nature” doctrine within a circumscribed set of
reasons, institutions, and practices. Second, while English and European law both recognize
a general exclusion on the patentability of natural products and basic scientific knowledge,
U.S. standards of patentability have been much more influential in the recent globalization of
intellectual property embodied in TRIPS. Thus, a study of this doctrine within U.S. case law
provides a specified range of analytical material that is feasibly extrapolated to the now
global standards of patentability.
A Patent Primer
The history of patents falls into three basic periods, with the catalyst for change in each
period being closely connected to a change in the dominant technologies and commodities
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needing patent protection.12. The first phase, which marked the birth of the concept of
patents in general, began in the late-fifteenth century when the Republic of Venice first
introduced the “Parte Veneziana” of 1474.13 This statute introduced many of the features still
present in modern patent laws, including temporally limited, exclusive rights for the first
inventor of a useful product, and a legal infrastructure to enforce those rights against
infringement. Around the same time, the English Crown began to issue “Letters Patent,”
deriving from the Latin litterae patentes or “open letters,” which extended Crown-sponsored
monopoly rights over new and important commodities and technologies.14 One of the
primary reasons to grant such rights was the incentive it created for individuals to introduce
new technologies to the realm by providing protection for that technology against
competition while it became established. Some of the first English patents protected
commodities such as soap, saltpetre, iron, leather, and glass. In this way, early patents were
closely connected to the craft and “practical arts” traditions.15
Corruption and favouritism eventually became pervasive in this system, however, and
in 1624 Parliament passed the Statue of Monopolies with the support of James I. This statute
placed a limit on the Crown’s power to issue monopoly privileges in two ways. First, it
placed a temporal limit on the patent grant, which, until then, had often extended for much
longer than fourteen years. Second, by declaring that patents could issue only for “new
manufactures,” Parliament limited the scope of patentable material to those inventions,
technologies, and commodities that had been theretofore unknown in the realm. A
monopoly, strictly speaking, is sole control over a commodity that is already freely available.
The Statute, then, was directed against true monopolies; it was a response to the tendency of
English monarchs to grant patents over commodities such as salt and paper, which were
widely needed, basic materials that were already publicly available. This prior availability
made items of this type inappropriate for monopoly control, thus giving an early articulation
to the public interest doctrine of patent regulation.
This system performed relatively well until about 1760, when the English patent
system began to experience intense socio-legal pressure in the form of an onslaught of new
inventions, which stemmed from the burgeoning Industrial Revolution. This pressure was a
12
WIPO (1997), Ch. 2
13
Ibid.
14
Walker (1995), pg. 9
15
Long (1991), pg. 871
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critical in the move to the second basic phase of patent history, characterized by the
establishment of several national patent systems.16 In England, law officers of the Crown
began to require detailed specifications for new inventions, as well as introducing codified
standards such as that of novelty. Almost simultaneously, the United States and France
instituted patent systems to encourage industrialisation and the introduction of new and
useful inventions for the public’s benefit. Between 1815 and 1820, only Britain, France, and
the United States issued more than 100 patents a year, but by 1854 these countries were
issuing more than 1,000 patents a year.17 As the quantity of patents issued increased, so too
did their quality. The U.S. was the first to introduce a formal system of substantive review
and registration, which it did in 1836, with other nations following suit by the middle of the
century. This substantive review process consisted of a centralized, independent patent
examination office with explicit statutory requirements.
Another crucial development during this period was the introduction of the term
“property” to cover the forms of state-sponsored privileges that patents granted. In their
influential study of this period, the economic historians Malchup and Penrose note that:
It happens that those who started using the word property in connection with inventions
had a very definite purpose in mind: they wanted to substitute a word with a respectable
connotation, “property,” for a word that had an unpleasant ring, “privilege.” This was a
very deliberate choice on the part of politicians working for the adoption of a patent
law…[who] knew that ‘the spirit of the time was so much for liberty and equality, and
against privileges and monopoly of any sort’ that there was no hope of saving the
institution of patent privileges except under an acceptable theory….For more than
seventy years afterward scholars seriously debated the notion of a property in ideas, a
notion first proposed, to put it bluntly, as a political ruse.”18
In fact, the discussion of “property” in ideas has extended for much longer than seventy
years, and, as I will discuss later in this essay, the great justificatory systems for physical
property are now routinely employed in the service of justifying patents and other forms of
intellectual property. At issue in these debates, however, was “industrial property,” which
consisted of technological advances in mechanical products and industrial processes. Patents
16
MacLeod (1991)
17
WIPO (1997), pg. 19
18
Malchup and Penrose (1950), pg. 16
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protected such things as textile looms, steam engines, and developments in the processing of
metals and basic chemicals.19
The third and current phase of patent history began around 1883 and is characterized
by the internationalization of patent recognition. In that year, the major international players,
with their colonies dutifully in tow, agreed upon the Paris Convention for the Protection of
Industrial Property, which was the first international agreement on the protection of patent
rights, and was followed closely by the Berne Convention for the Protection of Literary and
Artistic Works (1886).20 The need for these international legal instruments arose during the
later part of the nineteenth-century within the context of several major international industrial
exhibitions, such as those in London, Paris, and Vienna, and was in response to the need to
protect various forms of commercially important material emerging from newly
industrializing countries.21 Among those driving these international extensions of patent law
were the huge German chemical and synthetic dyestuffs industries, as well as the emerging
pharmaceutical and agricultural industries.22
This phase of internationalization is still occurring today. In 1995, the international
community, through the institutional apparatus of the World Trade Organization, agreed
upon the Trade-Related Aspects of Intellectual Property (TRIPS). When TRIPS became law,
it established global minimum standards for the protection of all forms of intellectual
property, and constituted the most significant international agreement on intellectual property
of the 20th century. By standardizing intellectual property principles for every member of the
World Trade Organization, as well as for those whom aspire to such membership, TRIPS was
the beginning of a profound transformation of the way intellectual property is handled within
the global economy.
The point of these historical considerations is simple, but incredibly important.
Throughout their history, patents have been directly associated with industry and technology.
The fundamental premise of the patent system, in other words, is that patents are for
technological inventions, which are new, useful, and genuine additions to “the storehouse of
knowledge.” Historically, then, patent systems were created as formal mechanisms to
encourage national innovation in the area of technological progress. So if patents
19
MacLeod (1988)
20
Hesse (2002), pg. 40; Cf. Burger (1988)
21
Cf. Coulter (1991)
22
Dutfield (2003), pg. 55
8
appropriately concern technological inventions, what do they not appropriately concern?

This contrastive question gets to the crux of the aims and justifications of the entire patent
system. As we saw with the Statute of Monopolies, patents should not issue on commodities
that were previously available in a competitive marketplace: pre-existence and prior
availability mark important exclusions from patentability. Moreover, as patents became
integral to national industrialization, the requirement that inventions do something before
patents issue gained in importance: utility and industrial application became central criteria of
patentability. These general criteria demarcate patentable inventions from those technologies
that are already available and/or do not perform a particular practical function.
One important contrast to the technological is the scientific. Science, in this
contrastive position, is fundamental research, basic knowledge constitutive of the common
conceptual tools necessary for all scientific work. In this sense, science is theoretical,
abstract, and often mathematical; it uncovers the laws of nature and discovers that which is
already there. Its knowledge, when true, is taken as an isomorphic representation of the way
the world really is. Being the disinterested pursuit of the fundamental knowledge of the
world, science is “the common heritage of mankind,” belonging to no one in particular and
available for all to use. Technology, on the other hand, is the application of basic science. It
often involves extensive research and development to transform fundamental knowledge into
useful applications. Building out of the common stock of knowledge, technology is the
natural outgrowth of the progress of science. As James Boyle says, “if Anglo-American
intellectual property law has an article of faith, it is that unoriginal complications of facts
would remain in the public domain…[P]rotecting the raw material of science and speech is as
important to the next generation of innovation as the intellectual property rights themselves.
The system offers a limited monopoly for an invention or an original expression of ideas, but
the monopoly is to be tightly confined to the layer of invention or expression. The facts
below, or the ideas above, would remain free for all to build upon.”23 This dichotomy
between science and technology was and is implicit in the construction of the patent system
as a whole. Out of the general stock of basic scientific knowledge, individuals can carve out
a space in which private property rights are acceptable - and this space is in the realm of
technology.
23
Boyle (2002), pg. 16
9
This distinction between science and technology rests at the conceptual heart of every
patent system. As such, a common exclusion from patentability has developed in most patent
jurisdictions. In U.S. law, this exclusion finds expression in the “products of nature”
doctrine. This doctrine acts as a prohibitive bar against patenting naturally occurring entities
and basic scientific knowledge, which both fall under the general rubric of “products of
nature.” The reason for this exclusion rests historically on a specific ideology of science that
sharply demarcates the scientific from the technological and has, in turn, become a
institutional and legal norm of the patent community.
What a Patent Is
A patent is a “grant by the state of exclusive rights for a limited time in respect of a new and
useful invention”.24 The two fundamental categories of patents are product and process
patents. There are several intermediate categories, such as product-by-process patents or
utility patents, but the distinction between products and processes is the most important.25
Product patents protect actual things, and are infringed by making, selling, or using the things
claimed. Process patents cover specific methods, and are infringed by performing the
activity or process that is protected.26 To obtain a patent, the inventor must submit an
application to the respective national patent office, fully disclosing how the invention is
made, the basic principles underlying it, and the technical steps involved in “working” the
invention (i.e. making the product or performing the process). Through this disclosure, the
system requires inventors to contribute to the general stock of knowledge such that, upon the
patent’s expiration, any person generally familiar with the “state of the art” of a given field
could reconstitute the invention with the information disclosed in the patent application.
One necessary entailment of the patent system is that in exchange for exclusive rights
over a given invention, the inventor must disclose the knowledge embodied in that invention
for the general public’s use and future benefit. This quid pro quo posits an inviolable public
domain as the eventual, but necessary, beneficiary of any patent system.27 This is done in
two ways. First, when an application is filed with the patent office, the details are published
for public consumption, which serves to incorporate the invention, and its concomitant new
24
Grubb (1999), pg. 3
25
Cornish and Llewelyn (2003), pg. 171
26
Ibid, pg. 169
27
Heald and Sherry (2000), pg. 1162
10
knowledge, into the “state of the art.” Even though the public cannot use this knowledge (i.e.
“work” the invention) without explicit authorization, this dissemination of information allows
the public to benefit immediately from the new knowledge being produced at the leading
edge of various technologies. Second, upon the expiration of the patent, all of the knowledge
contained within the claims becomes public and free for all to use. Either way, then, the
public is necessarily the intended beneficiary of the patent system. The double benefit for the
public comes when the inventor provides the new invention for immediate use, if in exchange
for a license fee, while contributing to the public storehouse of knowledge once the patent
has expired.
The exclusive nature of a patent right is limited to prohibiting others from using or
“working” the invention. Each patent application contains a set of claims, the purpose of
which is to circumscribe or delineate the limits of the invention under patent.28 In this way,
the exclusivity of a patent right is a negative exclusivity. A patent holder (or patentee) can
only prevent others from using or imitating the invention under patent; the right does not
entail an unlimited positive right to develop or employ the invention when and however the
patentee wishes. For example, the owner of a patent over a specific pharmaceutical product
does not have the right to exploit that right in defiance of other laws or regulatory structures,
such as approval by the requisite health authorities, nor does it give the patentee a right to
infringe other existing patents.29
In order for an invention to be patentable, it must be a contrivance, a device, a
composition of matter; in short, a material thing or a concrete object or process. As one legal
scholar puts it, “[a] fundamental principle common to all genres of intellectual property is
that they do not carry any exclusive right in mere abstract ideas. Rather, their exclusivity
touches only the concrete, tangible, or physical embodiments of an abstraction.”30 The patent
itself, however, is a written document. It contains abstract written claims establishing what
the patent does and does not cover, as well as the extent to which it relies upon knowledge in
the prior art. These claims constitute the “scope” of the patent. Technically, therefore, the
exclusive rights of a patent extend only to the particular configuration of materials contained
within the scope of the patent grant. That said, for all practical purposes, the exclusivity of a
28
29
Grubb (1999), pg. 4
30
Hughes (1988), pg. 295
11
patent does cover the abstract ideas described within the scope, if simply because to do
anything more than hold the ideas of the patent in one’s mind would be to infringe the patent.
Scope and Exclusions to Patentability

To obtain a patent, an invention must fall within the scope of patentable subject matter. In
the U.S., Section 101 of the Patent Act states that patents may be obtained for “any new and
useful process, machine, or manufacture, or composition of matter, or any new and useful
improvement thereof”.31 From a global point of view, the scope of patentable subject matter
in the U.S. is wide indeed, and with the passage of TRIPS in 1995 these standards became
international. In 1988, for example, the World Intellectual Property Organization (WIPO)
conducted a survey revealing that, of the 98 members of the Paris Convention, “49 excluded
pharmaceutical products from protection, 45 excluded animal varieties, 44 excluded methods
of treatment, 44 excluded plant varieties, 42 excluded biological processes for producing
animal or plant varieties, 35 excluded food products, 32 excluded computer programs, and 22
excluded chemical products.”32 When TRIPS became law, it declared all these exceptions
null and void.
Article 27 of TRIPS states that patents “shall be available for any inventions, whether
products or processes, in all fields of technology, provided that they are new, involve an
inventive step and are capable of industrial application.”33 Furthermore, “patents shall be
available and patent rights enjoyable without discrimination as to the place of invention, the
field of technology and whether products are imported or locally produced.”34 It is important
to note that restricting the scope of patentable subject matter goes against the basic logic of
the patent system. Because patents aim to stimulate invention and creativity, their scope
must not be tied too tightly to “standard” technologies, lest risking failure to serve the
purposes for which they exist. Thus, expanding the scope of patentable subject matter to
accommodate new technologies is an essential aspect of any functioning patent system.
Within U.S. law, there are very few statutory exclusions to patentability, the most
significant of which includes nuclear materials, atomic weapons, and other inventions
31
Section 101, Title 35, United States Code
32
“Existence, scope, and form of generally internationally accepted and applied standards/norms for the
protection of intellectual property”, WIPO, WO/INF/29 September 1988, issues at GATT document
number MTN.GNG/NG11/W/24/Rev.1; quoted from Drahos with Braithwaite (1999), pg. 72
33
TRIPS, Section 5, Article 27, Section 1
34
Ibid.
12
deemed central to national security.35 Unlike U.S. law, several exceptions to patentable
subject matter did make it into the language of TRIPS. Perhaps the most notable of these
exceptions is the so-called “public morality” exclusion, which declares that member states
“may exclude from patentability inventions, the prevention within their territory of the
commercial exploitation of which is necessary to protect ordre public or morality, including
to protect human, animal or plant life or health or to avoid serious prejudice to the
environment….” This exclusion has played an especially significant role in European
patentability debates, for example in arguments for excluding various new technologies such
sections of the human genome or living organisms, from the scope of patentability. As courts
have been faced with such challenges, however, they have tended to construe the exception
quite narrowly, in effect making it difficult to argue from this exclusion.36 This is because
the courts have generally held that the extent to which a given invention actually violates
public morality is a question for the legislative and executive branches, and not the judiciary.
Other areas of exclusion outlined in TRIPS include “diagnostic, therapeutic, and
surgical methods for the treatment of humans and animals,”37 as well as “plants and animals
other than micro-organisms, and essentially biological processes for the production of plant
and animal other than non-biological and microbiological processes.”38 And while these
exclusions may, on their face, seem significant, the range of their applicability has been
construed narrowly in judicial interpretations. For example, pharmaceutical products and
processes remain patentable even though they are commonly considered to be a therapeutic
method of treatment for humans.39
Again, U.S. law contains very few codified exclusions to patentability. The majority
of exclusions that have been carved out within this body of law, rather, find their articulation
from the judicial bench. The most important of these exclusions is that of “products of
nature”. In the U.S., courts have affirmed time and again that “products of nature” are
ineligible for patent protection. In the United Kingdom, this exclusion to patentability is
codified in the 1977 Patents Act, which states, inter alia, that a discovery, scientific theory,
or mathematical method do not constitute inventions for the purposes of the Act. Moreover,
U.K. law prohibits patents from issuing on schemes, rules or methods for performing any
35
U.S. Atomic Energy Act, 1954
36
Van Overwalle (2000), pg. 197; Schatz (2000), pg. 220
37
TRIPS, Article 27, Section 3(a)
38
TRIPS, Article 27, Section 3(b)
39
For more on the reasoning behind this, see Grubb (1999)
13
mental act, or the presentation of information.40 So while U.K. law explicitly excludes
discoveries, scientific theories, and mathematical methods, U.S. law does so implicitly
through the “products of nature” doctrine.
Criteria for Patentability

If an invention falls within the scope of patentability, the three basic criteria of patentability
must then be met. These include 1) novelty, 2) an inventive or non-obvious step, and 3)
industrial application or utility.
The first, and perhaps most important, of these criteria is that of novelty. The concept
of novelty is absolutely fundamental to any system of patents. As Cornish and Llewelyn
explain, “[n]o system grants valid patents for inventions that are already known: that would
be to encumber industry with constraints upon the use of information without any sufficient
return.”41 Patents, in other words, are intended only for genuine additions to the “storehouse
of knowledge”. There must be a creative element, which contributes or modifies materials
that already exist, before patents can issue. Novelty is established within a patent application
by reviewing the “prior art”. The term “prior art” is defined as basically everything that was
known before the time of the invention. The U.S. Patent and Trademark Office (USPTO)
encourages applicants to list within their own application all of the relevant knowledge
involved in their invention, which helps the patent examiner determine novelty. By doing
this, the applicant can establish that their invention is indeed a genuine addition to a body of
cumulative knowledge. If the basis of the novelty claim for any given patent is known or has
been disclosed through written or oral publication in the general state of the art, then novelty
is defeated. Thus, novelty is defeated if as few as one individual or one published reference
within the applicant country exhibited the knowledge being claimed as novel under the patent
application.
While the second criterion of patentability, which requires an inventive or non-
obvious step, is similar to the novelty requirement, it is conceptually distinct. This is because
novelty can – in principle – be determined after the patent has been “construed,” or its scope
40
These exclusions are also present in the European Patent Convention, Article 52(2)-(3), but also derive
from older UK law, which stated that an invention was a “manner of manufacture”. Cf. Bainbridge (2002),
pg. 361
41
14
has been analytically determined.42 Determining whether the invention entails an inventive
step, on the other hand, necessarily involves a “subjective” determination by the examiner
reviewing the patent application. But when the patent examiner attempts to identify the
inventive step in a particular invention, the basis of the evaluation is made in reference to an
ideal competent person skilled in the relevant art, and not simply any member of the general
public.43 In U.S. law, this standard is expressed in terms of “non-obviousness”. Section 103
of the U.S. Patent Act states that “[i]f the differences between the subject matter as a whole
would have been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains,” then a patent cannot issue. The
question of inventive or non-obvious step, then, is limited to whether the invention solves a
problem or need – no matter what the size – in such a way that a competent person skilled in
the relevant art would have deemed the step non-obvious with reference to the relevant prior
art.
The third criterion of patentability involves industrial application or utility. In the
UK and Europe, industrial application is defined broadly so as to include working the
invention in any sector of industry, including agriculture. Similarly, the utility requirement in
U.S. law is found in Section 101 of the Patent Act, which is the section often taken to be
simply the definition of the scope of patentable material. Again, definitional standards of
utility vary across jurisdictions, but the utility requirement works to exclude from
patentability knowledge that is not directly connected to a particular use. This excludes
abstract ideas, basic mathematical knowledge, and other forms of information that are not in
the service of a particular invention. Recent trends within the U.S. in particular have been
toward granting patents on inventions with nominal utility. As one patent attorney
44
commented, “you get utility if you can spell it.” In the end, however, the concepts of utility
and industrial application are central to any patent system, and are actually one of the basic
justifications for excluding scientific laws and discoveries from patentability on the grounds
that such things, in themselves, are not useful.
42
Ibid, pg. 58
43
Cornish and Llewelyn (2003), pg. 196; Grubb (1999), pg. 59
44
Jaffe and Lerner (2004), pg. 38
15
Discovery and Invention

From the criteria of patentability, one can construct a definition of an invention. An
invention is a novel material object that performs some useful function in a non-obvious way;
it is a creation by man using already existent knowledge in a novel manner to accomplish a
useful end. A discovery, on the other hand, is an uncovering of that which is already there.
As we have seen, patents cannot issue for mere discoveries. From this distinction derives the
“products of nature” doctrine of exclusion from patentability.
When a patent application is rejected because it involves a claim on “products of
nature,” it is important to differentiate between the reasons given for the denial. There are
two basic reasons given for excluding “products of nature” from patentability.45 First, there
is the novelty argument, which holds that natural products and scientific laws are already
existent, even if we have not yet discovered them. The other reason given is a type of
slippery-slope argument, which hold that everything, in some sense, can be considered
“natural” or derived from “natural” sources, and that excluding certain “products of nature”
from patentability is bound to be conceptually arbitrary and could possibly call into question
any and every patented invention. We will see how these reasons have played out in the
relevant case law, but no matter what the reason(s) given for rejection, there does seem to be
one basic underlying assumption that is necessarily at work in all the thinking about this
doctrine: that the things existing in nature, regardless of whether they are “products” or
“laws” of nature, have always existed in nature and are therefore already a part of the general
storehouse of knowledge.46 This assumption, obviously, has quite a bit of metaphysical and
epistemological baggage packed into it, but it is important to note that the “products of
nature” doctrine assumes that basic scientific knowledge obtains in the world without any
knowing subjects; the truth of mathematical and scientific laws, the reality of scientific
ontologies, and the basic knowledge of science have always already been in the world, and it
is only a matter of time before the scientific mind uncovers this latent truth.
As the distinction between invention and discovery is essential for determining
patentability, the mediation of the boundaries between this distinction is of vital importance.
Recall that a patent is a written document with specific claims made in reference to the prior
art and the novel invention in question. In this way, patents are a type of scientific and
45
Davis (1995), pg. 330
46
Gipstein (2002), pg. 5
16
technological artefact; they constitute a specific scientific and technical literature whose aims
are to establish claims about the nature of an invention and its reliance upon various scientific
facts.47 The nature of invention, then, is necessarily situated within a text that attempts to
demarcate the inventive aspect from its discovered counterpart.48 Within the presentational
context a patent application, the logic of discovery and the nature of invention are absolutely
critical rhetorical devices. Negotiating the boundaries between discovery and invention is, in
other words, central to establishing that a given contrivance is patentable subject material.
In an insightful study, Greg Meyers compares the way in which two scientists went
about trying to secure a patent over inventions that originated from basic scientific
discoveries.49 Throughout the course of their research, both scientists “discovered”
phenomena for which they subsequently developed useful applications and sought patent
protection. Meyers followed these scientists through the patent application process and
documented how, with the professional aid of a patent attorney, their unpatentable
“discoveries” became patentable “inventions.” In this way, negotiating the boundaries
between the context of discovery and the context of invention is essential to receiving a
patent. Like the boundary between science and technology, the distinction between
discovery and invention is basic to the patent system. The rhetorical and textual work that
goes into establishing the nature of an “invention”, as distinct from a discovery, is a specific
type of “boundary-work”.50 By relying on these distinctions for the criteria of patentability,
the law becomes an active participant in mediating these boundaries. Working out exactly
where these boundaries fall, however, is largely left to the courts and their adjudication
within the body of case law.
The Nature of the Natural

So within the basic framework of patent law, there traditionally has been an exclusion from
patentability of “products of nature.” Within this general exclusionary doctrine, there are
three general types of cases that emerge, each with a distinctive line of reasoning and a
distinctive line of fact patterns. I will examine three basic areas of case law that address this
issue. First, I will look at several cases dealing with the patentability of mathematical truths
47
Cf. Walker (1995)
48
Woolgar, (1980), pg. 248
49
Meyers (1995)
50
Gieryn (1983)
17
as “products of nature.” Second. I will look at several cases dealing with the patentability of
living organisms and their legal status as “products of nature.” Finally, I will examine a
divergent line of cases that address the patentability of natural substances that have been
isolated and purified from natural products. I maintain that, at the heart of the “products of
nature” doctrine, there is a type of “the myth of the given” at work. Each of these strands of
the “products of nature” doctrine offers a different perspective on what, exactly, a “product of
nature” is, and, taken together, exhibit a conceptual tensions that has developed at the heart of
this legal doctrine. And, as I will show in the final section of this essay, these tensions work
to undermine the basic philosophical justification for patents in general.
Nature as Number: Mathematical and Algorithmic Patents

In the 1972 case Gottschalk v. Benson, the Supreme Court addressed the issue of the
patentability of scientific and mathematical truths. The Acting Commissioner of Patents,
Gottschalk, challenged the process claims of Benson’s patent, which covered an algorithm to
convert binary-coded decimal numbers into pure binary numbers for use in all conventional
digital computers. The certified question before the Court was whether the algorithmic
method described in the patent constituted a patentable process under 35 U.S.C. 100.51 Citing
the Court’s ruling in Mackay Co. v. Radio Corp., Justice Douglas affirms that “while a
scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and
useful structure created with the aid of knowledge of scientific truth may be.”52 This would
seem an obvious point, as any invention necessarily instantiates or incorporates some
mathematical or scientific truth in some way. He goes on to say:
A principle, in the abstract, is a fundamental truth; an original cause; a motive; these
cannot be patented, as no one can claim in either of them an exclusive right…Phenomena
of nature, though just discovered, mental processes, and abstract intellectual concepts are
not patentable, as they are the basic tools of scientific and technological work.”53
Within these statements, Justice Douglas conflates two important issues, the first being the
difference between the abstract mathematical or scientific truth and its instantiation in a
concrete invention or process, and the second being the precise reason for exclusion. While
51
Title 35 U.S.C. 100 (b) states: “The term ‘process’ means process, art or method, and includes a new use
of a known process, machine, manufacture, composition of matter, or material.”
52
Mackay Co. v. Radio Corp., 306 U.S. 86, 94
53
Gottschalk v. Benson, 409 U.S. 63 (1972); Douglas draws parts of this quote from the lower court rulings
in Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507 and Le Roy v. Tatham, 14 How. 156, 175.
18
the former is not patentable, it is unclear whether it this is because it does no work or because
it is a “basic tool of scientific and technological work.”
Justice Douglas finds justification in this view by drawing an interesting parallel to
the Court’s previous findings in the cases involving Samuel Morse’s patents on the telegraph
and Alexander Graham Bell’s patents on the telephone. In the Morse case, the Court
disallowed his process claim to the use of “electro magnetism, however developed, for
marking and printing intelligible characters, signs, or letters, at any distances” on the grounds
that such a claim was disconnected from a specific process or machine that accomplished the
result. The Court ruled that, “the use of magnetism as a motive power, without regard to the
particular process with which it was connected in the patent, could not be claimed, but that its
use in that connection could.”54 In other words, the scope of Morse’s patent claims extended
to any process whereby principles of electromagnetism were used for the inscription of
characters. The Court ruled that any process claiming patentability must be tied to a
particular form of material production. Similarly, citing The Telephone Cases, the Court
mentioned that Bell’s patent was valid precisely because it was restricted to the use of
electricity with regard to the transmission of vocal and other sounds, and not “for the use of a
current of electricity in its natural state”.55
Thus, because the question under review in Benson involved a patent claim on the
algorithmic process itself, regardless of the machine it was embedded in, the Court denied its
patentability: “The mathematical formula involved here has no substantial practical
application except in connection with a digital computer, when means that if the judgment
below is affirmed, the patent would wholly pre-empt the mathematical formula and in
practical effect would be a patent on the algorithm itself.”56 Here the Court affirmed a basic
premise of the “products of nature” doctrine, namely, that patents cannot issue on
mathematical formulae or principles “themselves”, but that when connected to a particular
function, their use in that capacity may be legitimately patented.
The Court reiterated its stance on this issue in Parker v. Flook, which was a 1978
decision on “whether the identification of a limited category of useful, though conventional,
post-solution applications of such a [mathematical or algorithmic] formula” are eligible for
patent protection. At issue was whether the algorithmic formula, limited to the particular
54
O’Reilly v. Morse, 15 How. 62; cited in Gottschalk v. Benson
55
The Telephone Cases, 126 U.S. 1, 534; cited in Gottschalk v. Benson
56
Gottschalk v. Benson, 409 U.S. 63 (1972)
19
mechanical process of updating alarm limits for the catalytic chemical conversion of
hydrocarbons, was patentable in its restricted form. Importantly, in this case the particular
process of updating the alarm limits was well known; what the patentee claimed was a new
algorithmic formula for performing the same mechanical process. Citing Mackay Radio and
Funk Bros. (discussed below) as proper frames of analysis, the Court said that “the process
itself, and not merely the algorithm, must be new and useful. Indeed, the novelty of the
mathematical algorithm is not a determining factor at all.”57 The reason why the novelty of
the mathematical expression is not an issue lies in the way the nature of mathematical
knowledge, and, by extension, all knowledge of scientific laws, is construed: “an algorithm,
or mathematical formula, is like a law of nature.”58 In terms of the “products of nature”
doctrine, then, mathematical formulae as expressions of laws of nature are already existent
entities; their discovery does not constitute a novel invention within the criteria of
patentability.59
Justice Stevens, writing for the majority, states that “the rule that the discovery of a
law of nature cannot be patented rests, not on the notion that natural phenomena are not
processes, but rather on the more fundamental understanding that they are not the kind of
‘discoveries’ that the statute was enacted to protect.”60 At this point, Justice Stevens provides
an important footnote, which takes the reader to a citation that begins with the claim that “the
underlying notion is that a scientific principle…reveals a relationship that has always
existed.” Justice Stevens then goes on to quote from Rosenberg’s 1975 Patent Law
Fundamentals, which states:
An example of such a discovery [of a scientific principle] was Newton’s formulation of
the law of universal gravitation, relating the force of attraction between two bodies, F, to
their masses, m and m1, and the square of the distance, d, between their centers,
according to the equation F=m m1/2d…But this relationship always existed – even before
Newton announced his celebrated law. Such ‘mere’ recognition of a theretofore existing
phenomena or relationship carries with it no rights to exclude others from
enjoyment…Patentable subject matter must be new (novel); not merely heretofore
unknown. There is a very compelling reason for this rule. The reason is founded upon
57
Parker v. Flook, 437 U.S. 584 (1978)
58
437 U.S. 587
59
Chisum (2000), 1-92
60
437 U.S. 587
20
the proposition that in granting patent rights, the public must not be deprived of any
rights that it theretofore freely enjoyed.61
This passage is fascinating for two reasons. First, there is a fundamental conflation between
the laws of nature themselves and our knowledge of those laws. One the one hand, there is
an ontological claim about the nature of mathematical and scientific laws, namely, that the
world itself is mathematical, and that the laws expressing this nature are merely articulations
of this underlying truth. On the other hand, there is an epistemological claim concerning the
nature of our knowledge about these laws, namely, that it corresponds directly to the way the
world is. This representational theory of knowledge holds that our mathematical expressions
about the world adequately capture the nature of the world. By conflating these metaphysical
and epistemological issues, the Court assumes that the knowledge of the laws of nature and
the laws themselves are the same thing, and have always existed and are only awaiting
human discovery. As far as the “products of nature” doctrine is concerned, then, discovery is
not a novel process; it is merely uncovering that which was always already there.
The second point, however, follows from this. If such knowledge has always already
existed, independent of it being articulated by an individual through a mathematical or
scientific language, then it cannot be legitimately appropriated through the patent system.
This would be, strictly speaking, a monopoly over scientific and mathematical truth. True
monopolies are grants of total control over a commodity that was already available.62 A
common misconception about the patent system is that grants monopoly rights. In this strict
sense, it does not. Patents grant exclusive rights of ownership for inventions that introduce
novel applications for knowledge; and, following the public interest doctrine that has been
central to the patent system since the Statute of Monopolies in 1624, patents cannot remove
any materials from the public domain.63 This is why properly granted patents on truly novel
inventions are not technically monopolies: they did not exist before the creator created them.
If an invention incorporates basic scientific or mathematical knowledge, the scope of the
patent claims cannot extend to cover this knowledge; it can only integrate that knowledge
within a limited and highly specified range of applications. Because scientific discoveries are
61
Rosenberg (1975), pg. 13; cited in Benson, n.15
62
63
The U.S. Supreme Court upheld this doctrine in Graham v. John Deere Co., 383 U.S. 1, 148 U.S.P.Q.
459.
21
taken to be uncovering that which is already existent, already potentially publicly available,
the novelty necessary for patentability is not present.
At work here is a particular version of the “myth of the given”. The scientific and
mathematical laws that sit at the heart of the unpatentability of “products of nature” are taken
as eternal truths that map onto the intrinsic structure of the world. The problem here is that
the ontological nature of the world is not distinguished from our knowledge of that world. If
“products of nature” could be encountered in an unmediated fashion, unmediated by human
knowledge, then perhaps one could feasibly exclude “products of nature” from the patent
system. But this is impossible. All knowledge is mediated; all knowledge is human, man-
made knowledge. The mathematical and scientific laws that sit at the heart of the “products
of nature” doctrine are not “given” to the human knower unmediated, as they “really” are.
They are always circumscribed within a space of prior knowledge and present needs. We
cannot know anything outside the human epistemological subject. All knowledge, scientific
or otherwise, isolates, it abstracts and extracts facts from the surrounding “natural” milieu to
give us knowledge of a particular set of phenomena, under particular sets of conditions. In
this way, the “given” nature of natural laws and knowledge creates an unnecessary
conceptual confusion at the very center of the “products of nature” doctrine.
Living Organisms and “Products of Nature”: The Vital Distinction?

Though it has undergone a significant reinterpretation in the last two decades, another area in
which this version of “the myth of the given” is operative is in the debate over the
patentability of living organisms. Up until the 1970s, primarily because there were so few
patents requesting such protection, there was no explicit exclusion of living organisms from
patentability. In the 1970s, however, as the U.S. Patent and Trademark Office began
receiving more applications with per se claims on living organisms, they began to deny
patentability on grounds that such things were “products of nature.” These denials of
patentability did not go unchallenged, and as they went through the various channels of
appeal, the distinction between living organisms and other “products of nature” came into
sharper relief. These appeals culminated in the landmark Supreme Court decision, Diamond
v. Chakrabarty, which held that living organisms are not, simply in virtue of being alive,
necessarily “products of nature.”
22
In 1908, however, long before the Supreme Court ever addressed the patentability of
living organisms, the Second Circuit Court of Appeals ruled on an 1899 patent for a “Process
of and Apparatus for Treating Sewage” (i.e. the septic tank).64 The patentee in this case,
Cameron, claimed as part of his patent the effects of placing anaerobic bacteria in a particular
mechanical system that treated raw sewage. The Circuit Court upheld his patent on the
grounds that it was neither a per se product claim on the bacteria themselves nor a per se
process claim on the process of anaerobic decomposition. Rather, the process claim covered
only the method for subjecting a flowing current of sewage to the action of anaerobic bacteria
in such a manner as to maximize their efficiency. The Court said, “[t]his certainly involved
‘the use of one of the agencies of nature for a practical purpose.’…The process is one which
puts a force of nature into a certain specified condition and then uses it in that condition for a
practical purpose…”65 Thus, living materials could be included in a patentable invention, but
the scope of the patent could not include per se claims on the organisms themselves.
In the 1948 case, Funk Brothers Seed Co. v. Kalo Inoculant Co., the Supreme Court
addressed the question of whether living organisms could fulfil the inventive step
requirement of patentability.66 The original per se product patent was granted to an
agricultural scientist, Bond, who discovered that the nitrogen-uptake efficiency in several
leguminous crops was significantly increased by combining six naturally occurring species of
Rhizobium bacteria in a certain topical medium. The patent was infringed and its validity
challenged in District Court, which invalidated the entire patent for want of invention. The
parties appealed all the way to the Supreme Court, whose only question was to consider
whether the specific combination of naturally occurring Rhizobium bacteria satisfied the
inventive step requirement of the patent laws.
Obviously, the patentee did not claim to have invented the natural qualities of the
bacteria that facilitated the nitrogen-fixing process; those were clearly products of their
“natural” existence. The Court recognizes that these qualities “are the work of nature,”
which “are of course not patentable. For patents cannot issue for the discovery of the
phenomena of nature”.67 Here, the Court again affirmed the excludability of natural products
from the realm of patentability. Writing for the Court, Justice Douglas went on to say that:
64
Cooper (2003), pg. 2-1
65
Cameron Septic Tank Co v. Village of Saratoga Springs, 159 F. 453 (C.C.A. 2d 1908)
66
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948)
67
Ibid, at 129
23
the qualities of these bacteria, like the heat of the sun, electricity, or the qualities of
metals, are part of the storehouse of knowledge of all men. They are manifestations of
laws of nature, free to all men and reserved exclusively to none. He who discovers a
hitherto unknown phenomenon of nature has no claim to a monopoly of which the law
recognizes. If there is no invention from such a discovery, it must come from the
application of the law of nature to a new and useful end.68
In the end, the Court denied the patent on grounds that it was “no more than the discovery of
some of the handiwork of nature” and hence unpatentable. Bond’s combination of the
several species of bacteria was no more than an “advance in the packaging” of natural
processes and did not, as such, meet the requirement of an invention. The Court declared that
patents could not issue “on one of the ancient secrets of nature now disclosed” precisely
because there was “want of invention.”69
In a concurring opinion, however, Justice Frankfurter invalidated Bond’s patent for
reasons other than the naturalness of the involved processes. Frankfurter notes that reasons
based on such a construal could call into question a vast range of already existing, valid
patents. He says that, “it only confuses the issue…to introduce such terms as ‘the work of
nature’ and the ‘laws of nature’. For these are vague and malleable terms infected with too
much ambiguity and equivocation. Everything that happens may be deemed ‘the work of
nature,’ and any patentable composite exemplifies in its properties ‘the laws of nature.’”70
Frankfurter seems to have been one of the first jurists to call attention to the inherent
ambiguity of this doctrine, though few seem to have taken his slippery-slope rejection of it
seriously.
The events leading to the next important case in this line of cases began on June 7,
1972 when Ananda Chakrabarty, working for General Electric, Inc., filed a patent application
for “Microorganisms Having Multiple, Compatible, Degradative Energy-Generating
Plasmids and Preparation Thereof.” As the title of the patent indicates, its claims were per se
product claims on the microorganisms themselves, which, using recombinant DNA
techniques to insert a gene into the bacteria, were rendered useful for breaking down
petrochemical materials such as oil within natural environments. The original patent
examiner rejected these claims based on the reasoning that living organisms were “products
68
333 U.S. 127 (1948)
69
Ibid, at 134
70
Ibid, at 148
24
of nature”. Chakrabarty appealed the rejection to the Board of Patent Appeals. The
Examiner’s Answer to the Appeal Brief stated that the “bacteria are in effect artificially
created mutants, which like naturally occurring mutants are ‘products of nature’ and as such
unpatentable. Furthermore,…while the provisions of 35 U.S.C. Sec. 101 do not expressly
exclude patents to living microorganisms…35 U.S.C. Sec. 101 neither in words nor in intent
encompasses products of nature such as the Pseudomonas bacteria and inoculum appellant is
here claiming. To do so would open the flood gates to patentability for all newly produced
microorganisms as well as for all newly developed multi-cellular mammals such as newly
bred chickens and cattle.”71 Chakrabarty again appealed the Board’s decision and the case
went to the Court of Customs and Patent Appeals (C.C.P.A.), the federal body that then had
jurisdiction over patent cases.
Meanwhile, in 1974 Malcolm Bergy, along with several colleagues, filed a patent
application for a process of preparing lincomycin without the concomitant production of a
biological by-product lincomycin B. The process claim covered the bacteria strain
Streptomyces vellosus isolated from the Arizona soil, which was “capable of producing the
antibiotic lincomycin in a recoverable quantity upon fermentation in an aqueous nutrient
medium containing assimilable sources of carbon, nitrogen, and inorganic substances.”72
Again, like with Chakrabarty’s claims, the original patent examiner rejected the per se
product claims on grounds that they were “products of nature”. Bergy and his colleagues
appealed this decision to the Board of Patent Appeals, which upheld the rejection of
patentability. In their ruling the Board adopted the view that “35 U.S.C. Sec. 101 must be
strictly construed and, when so interpreted precludes the patenting of a living organism.”73
At issue in both the Chakrabarty and Bergy appeals was whether living organisms fit
the statutory description of patentability in Section 101 in virtue of being a new
“manufacture” or “composition of matter.” Complicating the reasoning here is the fact that
Congress had made special patent provisions for one type of living material, namely plants,
in the Plant Patent Act of 1930.74 The Board reasoned that Congress recognized that living
material did not fall under the patentability requirements of Section 101 and thus established
a sui generis system to serve the patent needs of horticultural and agricultural inventions. If
71
In re Chakrabarty, Patent Appeal No. 77-535, Transcript of Record (Rec.), 88-9
72
Application of Bergy, Ser. No. 477, 766; Ex Parte Bergy, Coates, and Malik, 563 F.2d 1031
73
Ex Parte Bergy, Coates, and Malik, 563 F.2d 1031, 79
74
35 U.S.C. Sections 161-164
25
Congress had intended patents to be available for other living materials besides plants, then it
would have established such provisions explicitly. Since Congress had not done this, it did
not intend for such material to be patentable. Put another way, if Congress had intended for
35 U.S.C. 101 to be construed broadly, they would not have not seen the need to enact the
Plant Patent Act.
Of the two cases, the Bergy case reached the Court of Customs and Patent Appeals
first. In 1977 the C.C.P.A. reversed the Patent Board of Appeals decision on the grounds that
the “products of nature” argument was “wholly lacking in merit.”75 Instead, the Court turned
to examine the living/non-living dichotomy, and whether there was statutory justification for
excluding living organisms from patentability. Drawing an analogy with the patentability of
processes involving biological materials, the Court found that such a distinction did not have
statutory basis.
[Biological] processes…are uniformly and consistently considered to be statutory subject
matter not withstanding the employment therein of living organisms and their life
processes…It seems illogical to us to insist that the existence of life in a manufacture or
composition of matter in the form of a biologically pure composition of matter in the
form of a biologically pure culture or a microorganism removes it from the category of
subject matter which can be patented while the functioning of a living organism and the
utilization of its life functions in processes does not affect their status under Section
101.76
While the dissenters noted that the “living process” analogy did not “logically compel” such
a reading, the analogy did lend support to the majority’s opinion. The decision concluded
with the Court stating that they considered it “in the public interest to include
microorganisms [for patentability]….In short, we think that the fact that microorganisms, as
distinguished from chemical compounds, are alive is a distinction without legal
significance.”77
Thus, when the Chakrabarty case reached the Court of Customs and Patent Appeals,
it was reversed based on the Bergy precedent. Based on these rulings, the Solicitor General
of the Patent and Trademark Office petitioned the Supreme Court for a writ of certiorari,
which it granted and remanded the case back to the lower Court for reconsideration in light of
75
Cooper (2003), pg. 2-5
76
Ex Parte Bergy, Coates, and Malik, 563 F.2d at 1037
77
Ibid, at 1038
26
the recently decided Parker v. Flook. The C.C.P.A. again reversed the Board of Patent
Appeals and upheld the patentability of Bergy and Chakrabarty’s inventions. Pushing for a
final ruling on this matter, both cases were again appealed to the Supreme Court, which
decided to hear the cases together. Before a judgment was issued, however, the Bergy claim
was dismissed as moot and so the Chakrabarty claim stood alone for judgement.
On June 16, 1980 the Supreme Court rendered a judgment in Diamond v.
Chakrabarty. Writing for a five to four majority, Chief Justice Berger held that
Chakrabarty’s patent was valid under Section 101. Recalling that the grounds for rejecting
Chakrabarty’s patent were two-fold – on the one hand, his claims were rejected because
micro-organisms were held to be “products of nature,” while on the other hand they were
rejected because living organisms did not fall under Section 101 – the Court rejected these
reasons and provided their own in response.
On the first point, the Court cited its decision in the Funk Bros. case, where it ruled
that the patentee had failed to enlarge the utility of the naturally occurring bacteria: “Each
species has the same effect it always had. The bacteria perform in their natural way. Their
use in combination does not improve in any way their natural functioning. They serve the
ends nature originally provided and act quite independently of any effort of the patentee.”78
By contrast, Chakrabarty had created an entirely new life form that had the potential for
significant utility. The Court found that “the patentee has produced a new bacterium with
markedly different characteristics from any found in nature and one having the potential for
significant utility. His discovery is not nature’s handiwork, but his own; accordingly it is
patentable subject matter under 101.”79 As to the second issue, the scope of patentable
material under Section 101, the court cited a Congressional Committee Report, which
claimed that the statutory subject matter was intended to “include anything under the sun that
is made by man.”80
Justice Berger goes on, however, to say that, “this is not to suggest that 101 has no
limits or that it embraces every discovery. The laws of nature, physical phenomena, and
abstract ideas have been held not patentable…Thus, a new mineral discovered in the earth or
78
79
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
80
As this is one of the most frequently quoted passages from this case, it is odd that the phrasing is not of
the Court’s own. The reference to the phrase comes from S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952;
H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952).
27
a new plant found in the wild is not patentable subject matter.”81 In other words, even though
living organisms fell within the scope of patentable subject matter, other “products of nature”
remained excluded. The distinction that matters, however, is the extent to which “natural”
organisms are interrupted or modified by human intervention. Again, the “naturalness” of
organisms is taken as given, as prior to our knowing or doing anything to the organisms
themselves; an organism’s “naturalness”, in other words, presents itself as an unmediated
given within the broader context of human intervention. After human intervention, the
naturalness of the organism recedes and its artificial character makes it worthy of patent
protection.
Artificiality and Human Intervention: The Isolation and Purification Principle

Following this line of reasoning, a specific exception has emerged to the general
excludability of “products of nature” from patentability. What is more, this exception was,
literally, an unprecedented legal creation that created an artificial distinction between
patentable subject matter in the biological and physical sciences.
The first case addressing this issue came in 1889 in Ex Parte Latimer.82 At issue here
was whether a naturally occurring fiber, found in the needle of the Pinus Australis tree, was
patentable subject matter. In its extracted form, the properties of the fiber needed for
industrial application were much more efficient than the materials previously available.
Thus, through the extraction process, the naturally occurring material was rendered
substantially more useful. The Court, however, found the fiber unpatentable on grounds that
it was extracted from a natural source and therefore a “product of nature.” This ruling is
consistent with the basic premises of the “products of nature” doctrine.
The isolation and purification exception to the “products of nature” doctrine,
however, came with the 1911 case Parke-Davis & Co. v. H.K. Mulford & Co.83 In this case,
the District Court upheld a per se product claim on human adrenaline which had been
isolated and purified from the suprarenal gland. The patentee, Takamine, had taken the
naturally occurring salt form of adrenaline and chemically converted it into a base through a
novel process of purification. In his ruling on the case, Judge Learned Hand declared that the
81
447 U.S. 303 (1980)
82
Ex Parte Latimer, 1889 Dec. Com. Pat. 123
83
Parke-Davis & Co. v. H.K. Mulford & Co., 189 F. 95 (C.C.S.D.N.Y. 1911)
28
new therapeutic value of the product claim constituted sufficient grounds for the patent to
stand. He said:
[T]he base was an original production of Takamine’s. That was a distinction not in
degree, but in kind. But, even if it were merely an extracted product without change,
there is no rule that such products are not patentable. Takamine was the first to make it
available for any use by removing it from the other gland-tissue in which it was found,
and, while it is of course possible logically to call this a purification of the principle, it
became for every practical purpose a new thing commercially and therapeutically.84
As justification for this ruling, Hand citied two cases that he apparently thought supported his
conclusion. But, as Richard Gipstein has recently shown, there is a considerable logical gap
in the precedent cases Hand cited and the conclusion he reached.85
The two cases Hand cited were the Kuehmsted aspirin case86 and the Union Carbide87
case, both of which were decided at the Federal Circuit Court level just a year earlier. In
Kuehmsted, the Circuit Court upheld a product patent on the purified form of a synthetic
chemical compound known as aspirin. It is crucial to note that the chemical under question
in Kuehmsted, acetyl salicylic acid, was and is a man-made chemical. This chemical was
known in the prior art, but the purification of the chemical by a novel process rendered its
chemical behavior markedly different from the more impure chemical in the prior art. Thus,
the Court held that it had a different therapeutic value and constituted a significant enough
improvement to justify a new patent. The Court noted that:
It makes no difference, so far as patentability is concerned, that the medicine thus
produced is lifted out of a mass that contained, chemically, the compound; for, though the
difference between [the patentee and the prior art reference] be one of purification only –
strictly marking the line, however, where the one is therapeutically available and the
others were therapeutically unavailable – patentability would follow.88
The emphasis on the therapeutic value of the purer substance seems justified within the basic
logic of patent law: if the new product constitutes a significant improvement over materials
already available, it would be inconsistent to disallow patent protection on the new and
improved substance. The therapeutic value missing from the prior art, in other words,
84
Parke-Davis, 189 F. at 103
85
86
Kuehmsted v. Farbenfabriken of Elberfeld Co., 179 F. 701 (7th Cir. 1910)
87
Union Carbide Co. v. American Carbide Co., 181 F. 104 (2d Cir. 1910)
88
Parke-Davis, 189 F. at 705
29
constituted enough of an improvement to warrant a new patent. But, in relying on this case,
Hand blatantly disregarded the fact that the chemical in question was synthetic; it was
artificial and man-made, whereas the product in Parke-Davis was a naturally occurring
substance, albeit unavailable in its natural form.
Similarly, the other case upon which Hand relied as authority in Parke-Davis was the
Union Carbide case. In this case, the Second Circuit Court upheld a patent on a purified
form of crystalline calcium carbide. The purified form, the Court found, was significantly
different from the amorphous product known in the prior art due to its altered functional
properties.89 For example, in its purified form, the crystalline calcium carbide was “much
harder, more compact, was better suited to gas generators, and would not deteriorate when
exposed to air.”90 The Court upheld the patent on grounds of novelty, never directly
addressing the issue that it was a purified form of a previously known substance. Again, just
as was the case in Kuehmsted, the materials in question in Union Carbide were man-made
and not naturally occurring.
This difference is crucial. Until Parke-Davis, no court had found purified natural
products to be patentable. All of the cases dealing with purified products addressed the
purification of synthetic, man-made materials. Steps of purification that led to significant
functional or therapeutic improvement in these synthetic products were sufficient grounds to
grant a patent on the improved product or process. However, Judge Hand seems to have
ignored this distinction in ruling that a purified natural product, namely, human adrenaline,
was patentable under the reasoning that a useable form had theretofore been unavailable for
use, and that the resulting product of purification made it a useable manufacture. This case,
in other words, ignored the precedent distinction between natural and artificial. It was a legal
creation based on a flawed logical extrapolation. Nevertheless, no subsequent ruling has ever
directly challenged the findings of Parke-Davis.
In the cases that have followed, however, there remains a firm distinction between
purifications of natural products derived from the physical sciences and those derived from
the biological sciences.91 In the biological sciences, the purification and isolation principle
serves as an exception to the “products of nature” doctrine, whereas in the physical sciences
there is no such exception and purified and isolated products remain unpatentable on grounds
89
Union Carbide Co., 181 F. at 107
90
91
Cf. Sanzo (1991); Gipstein (2002); and Golden (2001)
30
that they are “products of nature.” This distinction seems to hinge rather flimsily on the
notion of “biotherapeutics,” or improvements upon natural products that are used in the
treatment of human illness, which renders a legal distinction between the nature of invention
in the biological sciences, on the one hand, and the physical sciences on the other.92
For example, in cases that came after Parke-Davis, courts repeatedly held that the
purification of physical elements, such as tungsten and uranium, were not patentable
advances. In General Electric Co. v. De Forest Radio Co., the Circuit Court ruled that,
despite a marked improvement on the utility of purified tungsten, exclusive patent rights
could not be granted on an “element of nature with characteristics that nature alone has given
it.”93 The Court recognized that Coolidge, the patentee in this case, had rendered tungsten
much more useable, but that Coolidge himself was not responsible for the intrinsic
characteristics of the metal. The Court asked: “Naturally, we inquire who created pure
tungsten. Coolidge? No. It existed in nature and doubtless has existed there for centuries.
The fact that no one before Coolidge found it there does not negative its origin or
existence.”94 In several other cases with similar fact patterns95, the Courts continually held
unpatentable mere purifications of physical substances, the reason being that the
characteristics that made the substance what it is was not created through the purification
process, but were inherent to the substances themselves. This remains the law today.
In a line of cases dealing with biologically active substances, however, the rulings
clearly point in the opposite direction. The best known of these cases is Merck & Co. v. Olin
Mathieson Chemical Corp., which addressed the patentability of vitamin B-12.96 Until the
time that the patentee succeeded in isolating the vitamin B-12 complex, it had been known to
exist in the liver of cows, but scientists had been unable to identify and isolate the complex in
a useable form. The patent in question concerned not the pure, crystalline B-12, but a
composition whose purity was defined within a specified range of limits. Writing for the
Court, Judge Haynsworth claimed that the “products of nature” doctrine essentially comes
from Section 102, the novelty requirement for patentability: “There is nothing in the
language of the [Patent] Act which precludes the issuance of a patent upon a ‘product of
92
Sanzo (1991), pg. 388
93
General Electric Co. v. De Forest Radio Co., 28 F.2d 641 (3d. Cir. 1928)
94
Ibid, at 643
95
In re John Wesley Marden and Malcolm N. Rich, 47 F.2d 958 (C.C.P.A. 1931) and In re Seaborg, 328 F.
2d 933 (C.C.P.A. 1964); also, Cf. Gipstein (2002)
96
Merck & Co. v. Olin Mathieson Chemical Corp., 253 F.2d 156 (4th Cir. 1958)
31
nature’ when it is a ‘new and useful composition of matter’ and there is compliance with the
specified conditions for patentability.”97 Drawing from Parke-Davis, then, Haynsworth
affirms that the “products of nature” doctrine only applies when a product or process is not
new and useful.
So the case law addressing the patentability of “products of nature” has developed in
several different, and sometimes conflicting, directions. On the one hand, there are those
cases concerning the patentability of mathematical and algorithmic formulae. The courts
here have attempted to draw the line of patentability where formulae are used in a particular
function and deny patentability when claims extend to cover the formulae themselves. This
line of cases remains especially fluid given the various pressures stemming from new
developments in the computer and digital technology industries.98 On the other hand, the
courts have responded to scientific and technological developments within the life sciences
that have changed our conceptions of the novelty and utility of living organisms. Where per
se claims on living organisms were once denied, courts have come to recognize the
possibility that organisms themselves can be altered to an extent they can be considered to be
man-made. This has led to the patenting to genetically modified organisms, which has
caused moderate levels of controversy in various jurisdictions.99 In yet another line of cases,
the courts have carved out an exception to the exclusion of “products of nature” from
patentable subject material, which addresses the patentability of isolated and purified natural
products. This exception is what allows sections of the human genome to be eligible for
patent protection on the grounds that particular segments of DNA are not found in an isolated
state in nature.100
At work within all three of these case law strands, however, is a naïve conception of
the nature of scientific knowledge, which incorporates a version of the epistemological
fallacy known as “the myth of the given.” Constitutive of this fallacy is the failure to
differentiate between our knowledge and theories about the world and the world itself. This
failure to differentiate results in a basic conflation of these two categories such that the
natural objects and processes which form the subject of our knowledge and theories about
97
Ibid, at 161
98
Chisum (2000), pg. 1-235-272
99
Cf. Crespi (1995) and Llewelyn (2000)
100
Cf. Eisenberg (1990) and Nuffield Council (2002)
32
those objects are naively assumed to exist in isomorphic relation.101 In other words, our
knowledge of the natural world is itself natural because it represents the way the world really
is and always has been. When construed in this way, such knowledge, and the objects to
which the knowledge refers, are unpatentable for the reasons we have seen above.
A Scientific Commons?
As I mentioned in the first section, there are two basic ways in which to conceive of patents.
On the one hand, patents can be considered a type of property. When patents are considered
forms of property, the philosophical discourse surrounding the justification of granting rights
in physical property is transferred to various forms of intellectual property. On the other
hand, patents can be considered as state-granted privileges for the accomplishment of some
pre-given socio-political end, usually to stimulate scientific and technological progress.
When patents are considered as a type of privilege, questions of justification turn on whether
the privileges, in this case patents, actually achieve their given socio-political aim. Each of
these conceptions of the patent grant roughly map onto one of the major schemes used to
justify rights and privileges in physical property.
There are two basic programs of justifications given to account for the nature and
extent of physical property rights.102 On the one hand, there is the deontological justification
of property rights, which is based on some form of natural rights to property. This program of
justification finds its first, and perhaps best, articulation in Locke’s Second Treatise on
Government.103 In general, deontological justifications concern the ways in which
individuals are entitled to rights in property; correlated and opposite these rights are requisite
duties and obligations.104 Associated with the justifications of these rights and duties are
what are called “natural rights,” or rights that obtain in virtue of being an individual human
being or the citizen of particular society.105 Within the context of debating whether such
rights exists and, if they do, what their nature, scope, and regulatory apparatus ought to be,
there is basic choice to make regarding the starting point of justification. Stated differently,
because deontological justifications are concerned with what individuals are entitled to, or
have a natural right to, the construal of “natural” is a key component. Due to this important
101
For a similar discussion in a different context, cf. Scambler and Scambler (2003)
102
Spector (1989); cf. Becker (1977)
103
Locke (1690), see esp. Ch. 5; cf. Nozick (1974), pg. 178
104
Cf. Hohfeld (1919)
105
Cf. Macdonald (1949) and Hart (1955)
33
conceptual inclination of deontological schemes, I will focus on this form of justification

below.
On the other hand, there is the utilitarian or consequentialist justification for property
rights, which finds its starting point in the work of the Jeremy Bentham.106 Utilitarian
arguments are perhaps the most common justification for patent rights employed today. In
fact, in the U.S. patents and copyrights are constitutionally justified along utilitarian lines.107
The most important aspect of the utilitarian justification is the economic argument.108 Central
to such an argument is that exclusive rights in new inventions are necessary to provide
economic incentives for the production of a socially optimal output of useful inventions.109
Without these incentives, so the argument goes, individuals and corporations would not have
the legal or financial support to pursue lengthy and often extraordinarily expensive research
and development projects to bring various products to market. And so the utilitarian
justification for patents is dependent upon showing that granting exclusive rights for new
inventions causes a net benefit to society through incentivizing innovation. But while this
may currently be the most popular form of justification for patents, it is empirically unclear
whether patents achieve the ends through which they are justified.110 As Malchup explained
before Congress in 1958, “[n]o economist, on the basis of present knowledge, could possible
state with certainty that the patent system, as it now operates, confers a net benefit or a net
loss upon society”.111 This unfortunate inability to empirically determine the economic and
social costs of the patent system remains true today.112
Both schemes provide robust justifications for the existence of private property,
though they do so in dramatically different ways. These justifications are then extended, with
moderate levels of difficulty, to the realm of intellectual property.113 In commenting on a
range of seventeenth-century English court cases where the justification of intellectual
property was the central issue, however, Peter Drahos notes that, “the outcome of the analysis
is less dependent on the choice of ethical theory [i.e. between deontological and utilitarian
106
Bentham (1789)
107
Article I, Section 8, Paragraph 8 of the U.S. Constitution declares that patents shall be issued “to
promote the progress of science and the useful arts.”
108
Cf. Landes and Posner (2003), esp. Ch. 11, 14, and 15, and Posner (2002)
109
Spector (1989), pg. 536
110
Svatos (1996)
111
Malchup (1958), pg. 15
112
113
Martin (1995), pg. 520
34
theories] and more dependent on the characterization or description of community in relation

to which the particular justificatory theory stands.”114 This is because before any rights or
privileges can be granted, there must be an adequate description of both the subjects who will
benefit from the rights and privileges and the objects that stand to be owned. With this in
mind, let me first outline the two general conceptions of community that underlay
philosophical justifications of property.
Justifications for property rights in physical objects are necessarily construed against
a conceptual backdrop of either positive or negative community. The term “community”
here has two components. On the one hand, it refers to all the relevant individuals
comprising the group or society to which rights will obtain, while, on the other hand, to the
totality of objects that will be the subject of those rights. The latter of these aspects is often
referred to as “the commons”. The commons is a term deriving from English law referring to
tracts of land to which members of the public had rights of access. In the sixteenth and
seventeenth-centuries, the English commons underwent a vast enclosure movement, which
aimed to privately appropriate the commons in order to prevent them from being degraded by
overuse; this is what has been termed the “tragedy of the commons.” The concept of the “the
commons” more generally, then, refers to a body of resources to which the public can claim
rights of access and use.
So, beginning with the concept of the commons, we can say that the world is full of
things, material objects that have the potential to be owned. From this, we move to
conceptions of the community to which the commons belong. On the one hand, community
can be conceived of positively, such that all the entities in the world begin by being owned
jointly or commonly among all people. On the other hand, community can be conceived of
negatively, such that all of the things in the world begin by being owned by no one, and stand
open for individuals to appropriate privately.
Historically, ideas of positive community precede those of negative community.
Beginning with a conception of positive community, Aquinas defined property in terms of
the right of exclusive possession so as to utilize the material things of the world for self-
preservation.115 When the commons is conceived as being owned by all, individuals
appropriate from the commons that which they need to survive. Inherent within the concept
of positive community is the idea that all people are automatically included in the commons,
114
Drahos (1996), pg. 25
115
Drahos (1996), pg. 46
35
especially when the basis for appropriation (as with Aquinas) is based on the notion of
individual self-preservation. It is also important to note that using positive community to
justify property rights has historically rested on a theological basis: God bequeathed the
world to all people in common, thus everyone has the distinct right to use that world in order
to continue their lives. Against the concept of positive community, however, many
traditional legal thinkers, such as Grotius, Filmer and Pufendorf, have conceived of property
against a background of negative community.116 Unlike positive community, however, there
is no right to be included in the commons, just the right to control the materials that are
appropriated from it.
From this dichotomy, the dilemma between the choices is clear. Whereas with a
positive conception of community one must justify how exactly the entities of the commons
are legitimately appropriated, with a negative conception of community one must justify the
criteria by which individuals are incorporated into the commons.
In this way, scientific knowledge constitutes a “positive commons,” or an area that
belongs to everyone in common. As we have seen, legally speaking, scientific knowledge is
held to be the discovery of that which is already here; it is knowledge revealing “one of the
ancient secrets of nature now disclosed”.117 The development of the patent system
throughout history has been the formal way in which to encourage the application of
scientific knowledge through technological progress. Out of the general stock of basic
scientific knowledge, individuals can carve out an acceptable technological space in which
private property rights were acceptable. By owning the rights in technical inventions,
individuals were rewarded for their mental labours and creative contributions to the common
stock of knowledge. The important point to note is that individual inventors who take from
this common stock of knowledge leave that body in tact for others to draw from.
The notion that scientific knowledge constitutes a positive commons holds in both
deontological and utilitarian justifications for patent rights. In each, the “products of nature”
doctrine functions to establish a positive commons for the sake of patentable subject matter.
In terms of physical property, it is crucial to note that both positive and negative conceptions
of community presuppose a limited number of physical objects that form the objects of
property. In terms of intellectual property, however, the objects of property are potentially
unlimited; the number of ideas and inventions are not circumscribed by a limited number of
116
Drahos (1996), pg. 45
117
36
predetermined objects. Put another way, within a positive conception of intellectual

community, the entities owned by all are already “out there” in a way they can be potentially
owned. Within a negative conception of the intellectual commons, on the other hand, the
potentiality associated with possible intellectual objects presupposes that those object do not
yet exist, but that through an act of creative invention they may be brought into existence. In
terms of a scientific commons, then, the construal of the nature of discovery is essential.
Within a negative conception of intellectual community, because no one owns the objects
that make up the commons, the objects themselves are not necessarily predetermined in their
existence. This makes invention the crucial criteria for private appropriation.
With this in mind, we can combine the two justificatory schemes with the two
conceptions of community and get four different categories for our consideration of the
justifiability of patent rights. First, there are deontological justifications based on positive
conceptions of community. Here, scientific knowledge and natural products are owned
commonly and granting property rights over these entities is justifiable only when an
appropriate amount of creative labour is added to their existence. And because “products of
nature” have typically been construed as discovered entities within the law, no such creative
labour is added, and therefore exclusive rights are unjustified. Conversely, there are
deontological justifications based on negative conceptions of community. Here, because no
one owns the objects of the commons, and therefore the entities themselves are not
necessarily predetermined, the extent to which one adds creative content determines the
justifiability of the respective rights. The third category encompasses a utilitarian
justification based on positive conceptions of community. Here, the objects of the commons
are owned commonly, but the extent to which rights are granted in these objects hinges upon
the social and economic consequences stemming from such a grant. Finally, there are
utilitarian justifications based on negative conceptions of community. Here, similarly, no
one owns the objects of the commons and rights are granted according to the level of
efficiency they achieve in the socio-economic sphere.
It is the first category of justification, however, that is the most relevant in terms of
the “products of nature” doctrine of patentability. Because scientific knowledge and natural
products are held unpatentable on the grounds that they lack novelty, the construal of the
discovered nature of these entities places them firmly within a positive conception of
community. Moreover, because contemporary patent law grants exclusive rights based on
37
the creative contributions of the inventor, deontological justifications are best suited to
address the justifications of these exclusions from patentability. And because a deontological
justification of property rights based on a positive conception of community is precisely what
John Locke was up to in his Second Treatise of Government (1690), it is to his theory that I
will now briefly turn.
Beginning with the so-called “state of nature,” a state in which there is no state and
no property rights, only individual people and individual objects, Locke sets out to justify the
formation of government and how private property can be legitimately appropriated from the
commons. Importantly, like Aquinas, Locke begins with a conception of positive
community. This starting point reflects Locke’s deep theological and metaphysical
commitments: God gave the world to humanity as a whole, thus the world is “owned” by all
of humanity. Correlated to the “products of nature” doctrine within patent law, this is the
idea that scientific and natural knowledge reflects the totality of state of affairs in the world
that have always already obtained and which were given to humanity in common. Following
the dilemma mentioned above, Locke’s next task is to describe how individuals can
legitimately appropriate property from a commons owned by all. To accomplish this, Locke
introduces his famous labor theory of property, which holds that when an individual mixes
their labor with the commons, the objects with which they mix that labor becomes their
private property.118 Drahos notes that “[b]y using labour as the starting-point for property,
Locke overcomes the problem of how individuals might be said to acquire property in objects
from the commons without obtaining the consent of the rest of the commoners. Labour
provides the individual commoners with a way of using the commons for their purposes.”119
This “mixing theory” is extrapolated to intellectual property in the sense that, when we mix
our mental labor with ideas, those ideas legitimately become ours. If, as in the way scientific
knowledge is construed within patent law, one’s labor does not add anything to the raw
materials – i.e. one is “merely” discovering relationships that have always existed – then
exclusive rights are unjustified.
Moreover, Locke himself placed limitations on the labor theory of property. In the
literature, these are usually termed the “Lockean Provisos”.120 The first of these provisos
declares that, after the appropriation of objects from the commons, there must be “enough
118
Locke (1690), Ch. 5
119
Drahos (1996), pg. 46
120
Nozick (1974), pg. 175; Hettinger (1989), pg. 43
38
and as good left in common for others.”121 This proviso is meant to circumscribe others’ uses
of physical objects such that that use does not harm or worsen another’s position. The
second Lockean proviso concerns spoilage.122 Locke declares that one cannot appropriate
from the commons more than can be legitimately used. In other words, taking more than one
can use is wrong because it is wasteful.
Patents, and intellectual property in general, run afoul of both these provisos.
Physical property is what economists term a “rivalrous” resource, which simply means that
one person’s use of a physical object precludes another from using it. Intellectual property,
on the other hand, is a “non-rivalrous” resource, meaning that one person’s use of the
information contained within a patent does not preclude others from using it in exactly the
same way and at exactly the same time.123 Patents fail to meet the first proviso by granting
rights to the first inventor of a product to the exclusion of all others. This clearly does not
leave “enough and as good” left over for others. Patents fail to meet the spoilage proviso as
well. As Hettinger says, “when owners of intellectual property charge fees for the use of the
expressions or inventions, or conceal their business techniques from others, certain beneficial
uses of these intellectual produces are prevented. This is clearly wasteful, since everyone
could use and benefit from intellectual objects concurrently.”124
As I argued in the second section of this essay, the characterization of scientific
knowledge within the “products of nature” doctrine has shifted from a strong emphasis on the
nature of discovery to that of the inventive, creative aspects of scientific intervention.
Accordingly, we must shift the conceptions of community underlying the justifications for
patent rights from positive to negative. When this is done, the justifications for excluding
“products of nature” from patentability begin to dissolve immediately. In other words, when
scientific knowledge and know-how is seen as an active intervention, rather than a passive
discovery, Locke’s labour mixing justification works much easier, and provides a much
stronger justification for including within patentable subject matter “anything under the sun
made by man”. This shift, however, still does not manage to overcome the two other
Lockean Provisos that intellectual property in general fails to satisfy. But this shift in the
characterization of the scientific commons does exhibit a certain amount of irony when one
121
Locke (1690), Ch. 5, Section 27
122
Ibid, Section 31
123
Posner (2002), pg. 9
124
Hettinger (1989), pg. 45
39
considers how the intellectual work being done by scholars within Science and Technology
Studies have been taken up and used with remarkably success within the industrial and
economic arguments.125 These scholars, in general, have attempted to situate scientific
knowledge and practices within a larger socio-political framework that emphasizes the
contingent and instrumental ways in which scientific knowledge is produced. This emphasis
on the creative and inventive aspects, as opposed to the idea that science is discovering that
which is already there, has found its way into the legal discourses of patent rights and
regulation, and with arguably negative consequences. But, alas, I do not have the space to
address this issue here.
Conclusion
In this essay I have attempted to show three things. In the first section of the essay, I argued
that the conceptual apparatus at work within the “products of nature” doctrine is of central
importance to the patent system in general. In other words, the distinctions between science
and technology, on the one hand, and discovery and invention, on the other, are but two of
the fundamental distinctions that demarcate the scope of patentable subject matter. The way
in which these distinctions are presented within patent applications and legal arguments,
moreover, constitutes the primary forum in which the “products of nature” doctrine finds its
articulation. Thus, in the second section of this essay, I considered the three primary strands
of the “products of nature” doctrine as it has developed within U.S. case law. What we see
upon close scrutiny is that this doctrine has undergone important reinterpretations in recent
decades, interpretations that are not necessarily consistent and have actually removed
important exclusions from patentability. The changes in the legal construal of what is and is
not “natural” stem primarily from economic pressure exerted from emerging technologies,
such as the digital computer and agro-biochemical industries, and the need to protect these
technologies from competition in the global marketplace. In the third section of the essay, I
turned to analyze this transformation in the construal of “the natural” in terms of its affects on
the various justifications for granting patents in the first place. What I maintained here was
that, by construing scientific knowledge as being primarily about discovering the natural
truths of the world that have always already existed, the justifications used for patents have
shifted from positive to negative conceptions of community. This, ironically, strengthens the
125
Pestre (2005b)
40
justifications for property rights in basic scientific knowledge, although several important
provisos remain unmet.
The debate over the patentability of “products of nature” will undoubtedly continue,
and the aim of this essay was to contribute to this discussion by way of clarifying the
conceptual issues inherent in any discussion of the nature of scientific knowledge and its
consequences within the socio-legal sphere.
41
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The World, Patent No. 5,674,892:

appropriately concern technological inventions, what do they not appropriately concern?

Scope and Exclusions to Patentability

Criteria for Patentability

Discovery and Invention

The Nature of the Natural

Nature as Number: Mathematical and Algorithmic Patents

Living Organisms and “Products of Nature”: The Vital Distinction?

Artificiality and Human Intervention: The Isolation and Purification Principle

conceptual inclination of deontological schemes, I will focus on this form of justification

theories] and more dependent on the characterization or description of community in relation

predetermined objects. Put another way, within a positive conception of intellectual

Becker, Lawrence C. (1977). Property Rights: Philosophical Foundations. London:

Drahos, Peter. (1996). A Philosophy of Intellectual Property. Dartmouth: Aldershot.

-------. (1999). “Biotechnology Patents, Markets, and Morality.” European Intellectual

Knowledge Economy?. London: Earthscan Publications, Ltd.

Golden, John M. (2001). “Biotechnology, Technology Policy, and Patentability: Natural

Grubb, P. W. (1999). Patents for Chemicals, Pharmaceuticals and Biotechnology:

Hettinger, Edwin C. (1989). “Justifying Intellectual Property.” Philosophy & Public

Hohfeld, Wesley N. (1919). Fundamental Legal Conceptions As Applied in Judicial

Journal, vol. 77, pgs. 287-366.

Llewelyn, Margaret. (2000). “The Patentability of Biological Material: Continuing

Macdonald, Margaret. (1949). “Natural Rights,” reprinted in Theories of Rights, Jeremy

Scarecrow Press, Inc.

World Intellectual Property Organization (WIPO), ed. (1997). Introduction to Intellectual

Zuckerman, Harriet A. (1988). “Introduction: Intellectual Property and Diverse Rights of

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