Article I, Section 8, Clause 8:
[The Congress shall have Power . . .] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,1 and, although a patentable invention is a mental achievement,2 for an idea to be patentable it must have first taken physical form.3 Despite the fact that the Constitution uses the term
discovery rather than
invention, a patent may not be issued for the discovery of a previously unknown phenomenon of nature.
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.4 In addition to refusing to allow patents for natural phenomena and laws of nature, the Court has held that abstract ideas and mathematical formulas may not be patented,5 for these are the
basic tools of scientific and technological work6 that should be
free to all men and reserved to none.7
As for the mental processes that traditionally must be evidenced, the Court has held that an invention must display
more ingenuity . . . than the work of a mechanic skilled in the art;8 and, though combination patents have been at times sustained,9 the accumulation of old devices is patentable
only when the whole in some way exceeds the sum of its parts.10 Though
inventive genius and slightly varying language have been appearing in judicial decisions for over a century,11
novelty and utility has been the primary statutory test since the Patent Act of 1793.12 Section 103 of the Patent Act of 1952, however, required that an innovation be of a
nonobvious nature; that is, it must not be an improvement that would be obvious to a person having ordinary skill in the pertinent art.13 This alteration of the standard of patentability was perceived by some as overruling previous Supreme Court cases requiring perhaps a higher standard for obtaining a patent,14 but, in Graham v. John Deere Co.,15 the Court interpreted the provision as having codified its earlier holding in Hotchkiss v. Greenwood.16 The Court in Graham said:
Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must 'promote the Progress of . . . useful Arts.' This is the standard expressed in the Constitution and it may not be ignored.17 Congressional requirements on patentability, then, are conditions and tests that must fall within the constitutional standard.
Underlying the constitutional tests and congressional conditions for patentability is the balancing of two interests – the interest of the public in being protected against monopolies and in having ready access to and use of new items versus the interest of the country, as a whole, in encouraging invention by rewarding creative persons for their innovations.18 By declaring a constitutional standard of patentability, however, the Court, rather than Congress, will be doing the ultimate weighing. As for the clarity of the patentability standard, the three-fold test of utility, novelty and advancement seems to have been made less clear by the Supreme Court's rejuvenation of
invention as a standard of patentability.19