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Justice Breyer: Patent Ignorance

Justice Breyer: Patent Ignorance

PatentlyO reported the following hypothetical.

In Mayo v. Prometheus, the Supreme Court is again addressing patentable subject matter. During oral arguments, Justice Breyer came-up with a hypothetical invention to help him draw the line on patentable subject matter.

JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.


JUSTICE BREYER: Okay? Is that a good patent or isn’t it?

MR. SHAPIRO: No … Well, because you — you’ve added to a law of nature [to] just a simple observation of the man’s little finger.

First of all taking aspirin is not a law of nature.  The law of nature would be how the body reacts to aspirin, but the process of taking aspirin is not a law of nature.   If you use this information to observe whether someone is taking too much or too little aspirin, then you have applied that “law of nature” to a human problem.  Namely, how to know how much aspiring one should take for a headache.

The Supremes struggled to find a hypothetical to understand 35 USC 101 according to the reports.  Here is a simple 35 USC 101 test that even they should be able to apply correctly.

Anything that man creates to solve an objective problem is an invention.  If a device/service is not found in nature separate from man then it is an invention.  For example, the ability to create fire or harness it is an invention of man.  No other animal has the ability to create or harness fire.  Man did not have some sort of inherent knowledge of how to create or harness fire, so creating fire is an invention.[1]

Applying this information to the above hypothetical, aspirin is created by man.  It does not exist separate from man, so this hypothetical is clearly within 35 USC 101.  Taking aspirin is not a part of nature.  Observing the effects of taking aspirin is not a part of nature.

Mayo’s argument in this case boils down to patents should not exist, or at least should not be apply to Mayo.

[1] However, it is no longer novel and therefore you could not patent for creating fire.



  1. I don’t know what to say Dale.

    Ever since you changed the format of your blog, it has gone downhill.
    There is no incentive for clicking to “see more” if the social media aspect of the blog is dead. And it is. Because no can see if anyone else commented yet. So why bother? The count of the number of comments so far is no longer displayed as part of your headline. So one must assume the count is zero and will stay at zero. Your fancified blog has become one of those coffee houses where no one goes there any more because no one goes there any more .

    Too bad.
    Because you have some wonderful insights.
    But no one will bother to look at them.

    But enough of that.
    Let’s get back to the Justice Breyer thing.
    Why pick on him?
    He is no more of an ignoramus about science, discovery, invention and start-up development than any of his 8 remaining brethren and sisteren (is that a word?)

    Mother Nature (MN) does not have a Federal or Universal Register where she writes down her “laws”. Instead these are abstract theories that we humans write down in our feeble attempt to understand how MN works. The founders of modern patent law understood that “usefulness” is the corner stone to our taking advantage of our understandings of how MN works. If looking at the pinky finger is useful, it is not a laughing matter.

  2. Because it was his hypothetical?

  3. No.
    Because if it is “useful” and; despite the fact that it “sounds” silly, it is still a statutory “method” that is novel, nonobvious and “useful”.

    Either Justice Breyer wants to honor the law that Congress passed or he doesn’t. Which is it?

  4. I think he wants to put patent law back to the 8th century.

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