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
- There is no such thing as a law of nature;
- Natural phenomena are not novel, therefore any discussion of their falling within the domain of patentable subject matter is dicta;
- No natural phenomena are claimed in this application;
- 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.