Sherry Knowles (Knowles Intellectual Strategies, LLC) and Anthony Prosser, one of Knowles’ agents have written an engrossing article (18 J. Marshall Rev; Intell. Prop. L. 144 (2018) arguing that the Supreme Court has meandered so far from the statutory language of 35 USC s. 101 and its application in Le Roy v. Taitam (1832) that the Court’s reliance on its own questionable precedent, beginning with Funk Brothers, has led the Court to effectively delete the patent-eligibility of “discoveries” from s. 101. Because diagnostic methods are only rationally characterized as “discoveries”, I read their paper with interest. Ms. Knowles has been in the thick of the s. 101 debate since 2014, when the first PTO Guidelines on patent eligibility were issued. Dr. Prosser has a PhD in chemistry.
The once oft-quoted dictum from the Court in Le Roy – which reversed on novelty grounds – was: “A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable….” The authors argue that Funk Bros. would have been decided differently if the Court had followed Le Roy’s instructions, or even its own logic:
“He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” Funk Bros., 333 US at 129.