Bifalgorithm post · Property · Because new plants may differ from old only in color

Patent Scope

Patent Scope (Property · Because new plants may differ from old only in color) — "The petitioner’s second argument is that micro-organisms cannot qualify as pa…

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  • The Court determines whether genetically engineered microorganisms require express congressional authorization for patent protection.
  • The petitioner argues that such microorganisms cannot be patentable subject matter without specific authorization from Congress.
  • The argument relies on the fact that genetic technology was unforeseen when Congress enacted § 101.
  • The petitioner claims that Congress is best equipped to weigh the economic, social, and scientific considerations involved.
  • The petitioner supports this position with Flook’s caution about extending patent rights into areas unforeseen by Congress.
  • The Court rejects the petitioner’s conclusion by distinguishing the roles of Congress and the judiciary.
  • Congress has performed its constitutional role by defining patentable subject matter broadly in § 101.
  • The judiciary must determine what the law means by construing the language Congress enacted.
  • The Court takes the statute as written and finds no ambiguity requiring reliance on legislative history.
  • The patent laws use broad terms to promote the progress of science and the useful arts.
  • The broad statutory language serves the intended social and economic benefits of technological progress.
  • Flook does not contradict this approach because it applied existing principles to reject a claim for an improved method of calculation.
  • Flook examined whether the claim was barred by the prohibition against patenting ideas or natural phenomena.
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"The petitioner’s second argument is that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. His position rests on the fact that genetic technology was unforeseen when Congress enacted § 101. From this it is argued that resolution of the patentability of inventions such as respondent’s should be left to Congress. The legislative process, the petitioner argues, is best equipped to weigh the competing economic, social, and scientific considerations involved, and to determine whether living organisms produced by genetic engineering should receive patent protection. In support of this position, the petitioner relies on our recent holding in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978), and the statement that the judiciary “must proceed cautiously when … asked to extend patent rights into areas wholly unforeseen by Congress.” Id., at 596, 98 S.Ct. at 2529. It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally true that once Congress has spoken it is “the province and duty of the judicial department to say what the law is.” Marbury v. Madison, 1 Cranch 137, 177, 2 L.Ed. 60 (1803). Congress has performed its constitutional role in defining patentable subject matter in § 101; we perform ours in construing the language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose. Here, we perceive no ambiguity. The subject-matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting “the Progress of Science and the useful Arts” with all that means for the social and economic benefits envisioned by Jefferson. Broad general language is not necessarily ambiguous when congressional objectives require broad terms. Nothing in Flook is to the contrary. That case applied our prior precedents to determine that a “claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.” 437 U.S., at 595, n. 18, 98 S.Ct., at 2528, n. 18. The Court carefully scrutinized the claim at issue to determine whether it was precluded from patent protection under “the principles underlying the prohibition against patents for ‘ideas’ or phenomena of nature.” Id., at 593, 98 S.Ct. at 2527."

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