Saturday, May 26, 2012

Mayo v. Prometheus -- a critique

            This writing will focus on how Mayo v Prometheus[i] muddies the distinction between mathematical models and natural phenomena, between human invention and things outside of human invention; and generally rests upon dicta in drawing an unsupportable conclusion.

I There are no “Laws of Nature”
            First, I would like to discuss how the term ”law of nature” is an oxymoron.
            The court, in an unfortunate bit of obiter dictum, equate Einstein’s mathematical statement, E-mc2, with a “law of nature.”  This reasoning misconstrues the essence of science.
            Science involves creating hypotheses, designing observational protocols, performing the protocols, collecting the results, and verifying whether the results tend to confirm or controvert the hypotheses.  Frequently, the hypotheses take the form of mathematical models.
            Mathematical models are useful, because they allow prediction in a generalized fashion.  If confirmed, they enable prediction of a larger number of real phenomena than would a single observation or a set of observations.
            Confusing mathematics and the occurrences being observed is a common error of reasoning.   This error begins with very small children, when we teach them to count on their fingers.  We tell them they have five fingers on each hand.  Many of them come to believe that the number five exists in their hands, when in fact the number is a product of human thought.
            If we look more carefully at each finger, we see that no two are the same.  Each is a unique creation, with its own print, slight differences in shape and angles of joints, differences in mechanical function, and differences in control structure as well.  We designate the number five to describe how we perceive these fingers.  This perception is a characteristic feature of many human minds, not so much of the fingers.
            There are people who have little or no ability to perceive the world in a mathematical fashion.  We think of these people as having a learning disability.  We give them bad grades in mathematics in school.
            Nevertheless, these people may have many other cognitive abilities that show them to be intelligent.  Curiously, despite the obvious intelligence of some of these people, we think of them as having something wrong with them, as opposed to concluding from their very existence that mathematics exists only inside the heads of some people.
            E=mc2 is no law of nature.  It is a mathematical model, invented by a human being, which has proved useful.  Like all mathematical models it could be modified or discarded subsequent to further observation.  Nature, by contrast, will not go away with the model, should the model happen to discarded.
            Scientific theories need not be expressed in mathematics.  For instance, the theory of evolution is expressed in words.  While I personally happen to believe in evolution, many people do not.  They love to point out that this theory could always be overturned in the face of further evidence, which is absolutely true.  Similarly to mathematical models, verbal theories do not exist in nature.  They are ideas that people have about nature that describe the results of observation.
            In general, nature has no “laws.”  People devise laws to help them describe what they observe about nature.  Personally, I see no reason why these human inventions should not be patentable, even though they are mathematical and human thought; however they have nothing to do with the claimed invention in the case at hand.
            It is lamentable that the Supreme Court finds necessary to insert dicta on this subject, and has done so repeatedly.

II Natural Phenomena Are Not Novel -- and serve therefore as poor examples
            The Supreme Court also gives the example of a new plant or mineral discovered in the wild as not being patentable subject matter.  
            These are examples of phenomena of nature rather than “laws.”  
            Moreover, existing phenomena are not novel.  The fact that humans might not have previously known of them does not mean they did not exist.  These phenomena are therefore poor examples to reason from as they are in any case inherently unpatentable.  Referring to them is also lamentable dicta in the area of patentable subject matter.
            These existing phenomena examples are in some sense the converse of the discussion of mathematics and natural laws above.  The fact that mathematics or scientific theories exist in the minds of many people does not mean that these exist outside the human perception of them.  Even the writing of mathematics or theories on paper is not mathematics, absent the ability of the mind to perceive what has been written.  Similarly, the lack of perception of a mineral or plant does not prove its non-existence, nor does the sudden discovery of that same mineral or plant make it new.[ii]
            Natural phenomena exist in nature.  In order for humans to invent something, it must not exist in nature.   
            Reasoning based on flawed understanding of the distinction between scientific theories and natural phenomena is bad enough; but worse, still, these examples seem to have absolutely nothing to do with the case at hand and therefore do not serve as the basis for any legitimate reasoning.

III. The claimed invention is not a “law of nature” or natural phenomenon
            The court says that the claimed invention in Mayo v. Prometheus is a law of nature, but that is not so.  
            The claimed invention relates to the human administration of a man made chemical, a drug.  The drug is administered as part of a claimed process, not by nature.  Doses are adjusted based on responses of a natural system, but the responses are not natural, because they are the result of the administration of the drug, which is not a natural phenomenon. Therefore, the consequences of the administration of the drug are not a “law” of nature, but the responses of natural systems to human intervention.
            Let us consider the examples of: downhole equipment, which determines the existence of natural phenomena such as presence or absence of petroleum; and industrial inspection equipment, which determines whether manufactured goods comply with predetermined criteria.  In such cases, a discovery might be made that measuring in accordance with certain criteria would yield useful information.  
            Assuming that the measurement equipment is not new, but only the criteria are new, I do not think that previously anyone would have supposed that such a new use for an old machine would fall outside the domain of patentable subject matter.  Instead, the only question that might have presented was whether the new use was really non-obvious.
            This case therefore has broad ranging unanticipated implications.
            I find disturbing, that the Supreme Court has so frequently come down on the side of unpatentable subject matter.  This creates perpetual uncertainty in the law and their reasoning does not hold up to scrutiny.
            In any case, I find that the reasoning again fails to support the conclusion.

IV. Misguided amicus briefs?
            Apparently, the court was influenced by the submission of amicus briefs from people in the medical field alleging that the patent in question was going to inhibit research.  I have not read these briefs, only the court's characterization of them.
            This particular patent is narrowly framed.  It is difficult to see how it could have a significant negative influence on research in general.   The conclusion that such a narrowly framed patent could have influence on the progress of the broad field of research is another example of obiter dictum.
            In general, one can find non patent holders wishing that they could practice claimed inventions.  Similarly, one finds people without large amounts of money wishing they could be rich.  Does this mean that the court should give just outright give the “have-nots” what they seek?

V. Conclusion
  1. There is no such thing as a law of nature;
  2. Natural phenomena are not novel, therefore any discussion of their falling within the domain of patentable subject matter is dicta;
  3. No natural phenomena are claimed in this application;
  4. The idea that this patent would have an inhibitory effect on research is far fetched.
I find, therefore, that the reasoning in this case is so flawed as to be completely incapable of supporting the conclusion drawn.  Perhaps we can get Congress to overturn the thing?

[this blog was edited Dec. 1, 2012]

[i] decided by the Supreme Court of the United States on March 20, 2012 No. 10-1150
[ii] I gather that there are people who believe that if a tree falls in the forest and no one hears it then it did not make noise.  I am not one of those people.  


  1. Have you found any authoritative yet simple treatises on "Laws of Nature" that could be submitted, for example to the USPTO, when fighting a rejection based on Mayo?

    In the first few chapters of his tome, "Road to Reality", Roger Penrose explains the use of mathematical models for the purpose of modeling Nature and some of the pitfalls in this approach. See for example this picture:

    However, "Road to Reality" is too dense and intimidating of a work for most people.

    1. It seems unlikely to me that there are philosophical treatises on the meaning of the term "law of nature" as used by the Supreme Court in the context of patent law. Even if there were a treatise on a closely related topic, it is not clear to me how that would be useful with the USPTO, as they are going to be looking at what the Supreme Court said was patentable, not what some treatise said was a "law of nature."

      I am going to try a brief summary of what the Supreme Court found to be unpatentable here.

      I would submit that this was a claim where the point of novelty lay in the response of a natural system to a known process administered with new criteria.

      If I were dealing with a similar case, I would try to frame the claim so it did not fit within that description.

      I would prefer to be in a situation where Congress had told the Supreme Court to stop categorizing new technology as unpatentable subject matter.