Mceniery, Ben --- "Storyline Patents': Are Plots Patentable?" [2009] MelbULawRw 10; (2009) 33(1) Melbourne University Law Review 292
[*] BA, LLB (Hons) (UQ), LLM (QUT); Lecturer, Faculty of Law, Queensland University of Technology; admitted to practice as a solicitor before the High Court of Australia and the Supreme Court of Queensland. Email <b.mceniery@qut.edu.au>.
[1] Andrew F Knight, ‘A Patently Novel Plot: Fiction, Information, and Patents in the 21st Century’ (2006) 47 IDEA 203, 204. Knight cites four applications, each of which is entitled ‘Process of Relaying a Story Having a Unique Plot’: US Patent Application 20050244804 (filed 28 November 2003); US Patent Application 20050255437 (filed 17 May 2004); US Patent Application 20050272013 (filed 7 June 2004); US Patent Application 20050282140 (filed 17 June 2004).
[2] See Andrew F Knight, ‘A Potentially New IP: Storyline Patents’ (2004) 86 Journal of the Patent and Trademark Office Society 859; Knight, ‘A Patently Novel Plot’, above n 1.
[3] Knight, ‘A Potentially New IP’, above n 2, 873.
[4] The requirement of ‘novelty’ is found in 35 USC § 102 and the requirement of ‘non‑obviousness’ is found in 35 USC § 103.
[5] Knight, ‘A Potentially New IP’, above n 2, 859.
[6] Ibid.
[7] Ibid 868–70.
[8] Ibid 873 (emphasis in original).
[9] Ibid 872.
[10] Ibid 871–2.
[11] Ibid 871–7.
[12] Ibid 873.
[13] Ibid 869.
[14] In Australia, a ‘computer program’ is protected by copyright law by virtue of it being a ‘literary work’; a ‘computer program’ includes both object code and source code: Copyright Act 1968 (Cth) ss 10(1), 21(5), 31. In addition, a patent may be awarded in respect of a computer software program when the requirements for patentability in the Patents Act 1990 (Cth) have been satisfied: see below n 103.
[15] Patents Act 1990 (Cth) s 13.
[16] Copyright Act 1968 (Cth) s 31(1).
[17] Copyright protection guards against the reproduction of a work in material form, but it does not prevent independent creation: Powerflex Services Pty Ltd v Data Access Corporation [No 2] (1997) 75 FCR 108, 126 (Black CJ, Hill and Sundberg JJ).
[18] Knight, ‘A Potentially New IP’, above n 2, 874, citing US Patent Application 20050244804 (filed 28 November 2003).
[19] Knight, ‘A Potentially New IP’, above n 2, 870 (emphasis in original).
[20] Ibid 868.
[21] 908 F Supp 1248 (SDNY, 1995). This example was used in Anu R Sawkar, ‘Are Storylines Patentable? Testing the Boundaries of Patentable Subject Matter’ (2008) 76 Fordham Law Review 3001.
[22] Leon Arden, One Fine Day (1981).
[23] Arden v Colombia Pictures Industries Inc, 908 F Supp 1248, 1249 (Chin DJ) (SDNY, 1995).
[24] Ibid.
[25] Directed by Harold Ramis, Columbia Pictures, 1993.
[26] Arden v Columbia Pictures Industries Inc, 908 F Supp 1248, 1249–50 (SDNY, 1995).
[27] Ibid 1259.
[28] See Knight and Associates, Storyline Patents and Plot Patents (2004) <http://www.
plotpatents.com>.
[29] Knight and Associates, Applications (2004) <http://www.plotpatents.com/applications.htm> .
[30] Ibid.
[31] See, eg, Diamond v Diehr[1981] USSC 40; , 450 US 175 (1981); State Street Bank & Trust Co v Signature Financial Group Inc[1998] USCAFED 107; , 149 F 3d 1368 (Fed Cir, 1998); AT&T Corporation v Excel Communications Inc[1999] USCAFED 57; , 172 F 3d 1352 (Fed Cir, 1999); Welcome Real‑Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110; CCOM v Jiejing [1994] FCA 396; (1994) 51 FCR 260.
[32] Powerflex Services Pty Ltd v Data Access Corporation [No 2] (1997) 75 FCR 108.
[33] For an examination of the history and traditional objects of the patent system, see E Wyndham Hulme, ‘The History of the Patent System under the Prerogative and at Common Law’ (1896) 12 Law Quarterly Review 141; E Wyndham Hulme, ‘The History of the Patent System under the Prerogative and at Common Law: A Sequel’ (1900) 16 Law Quarterly Review 44; E Wyndham Hulme, ‘On the History of Patent Law in the Seventeenth and Eighteenth Centuries’ (1902) 18 Law Quarterly Review 280; P J Federico, ‘Origin and Early History of Patents’ (1929) 11 Journal of the Patent Office Society 292; Paul E Schaafsma, ‘An Economic Overview of Patents’ (1997) 79 Journal of the Patent and Trademark Office Society 241.
[34] Knight, ‘A Potentially New IP’, above n 2, 859, citing Diamond v Chakrabarty[1980] USSC 119; , 447 US 303, 309 (Burger CJ for Burger CJ, Stewart, Blackmun, Rehnquist and Stevens JJ) (1980). Knight’s argument is reminiscent of Maurer’s in favour of broad scope of patentable subject matter: Erik S Maurer, ‘An Economic Justification for a Broad Interpretation of Patentable Subject Matter’ (2001) 95 Northwestern University Law Review 1057.
[35] Knight, ‘A Potentially New IP’, above n 2, 860, citing Diamond v Diehr[1981] USSC 40; , 450 US 175, 185 (Rehnquist J for Burger CJ, Stewart, White, Powell and Rehnquist JJ) (1981).
[36] Knight, ‘A Potentially New IP’, above n 2, 862, citing State Street Bank & Trust Co v Signature Financial Group Inc[1998] USCAFED 107; , 149 F 3d 1368, 1375 (Rich J for Rich, Plager and Bryson JJ) (Fed Cir, 1998), cert denied 119 S Ct 851 (1999). State Street Bank & Trust Co v Signature Financial Group Inc was in turn citing Re Alappat, 33 F 3d 1526, 1544 (Rich J for Rich, Pauline Newman, Michel, Plager, Laurie and Rader JJ) (Fed Cir, 1994). Since Knight wrote, this ten‑year‑old formula for determining patent‑eligible subject matter — that an invention must produce a ‘useful, concrete, and tangible result’ — has been overturned by the United States Court of Appeals for the Federal Circuit, which described the test as being ‘insufficient to determine whether a claim is patent‑eligible’: Re Bilski, 545 F 3d 943, 959 (Michel CJ for Michel CJ, Lourie, Schall, Bryson, Gajarsa, Linn, Dyk, Prost and Moore JJ) (Fed Cir, 2008).
[37] Knight, ‘A Potentially New IP’, above n 2, 869.
[38] 76 USPQ 2d (BNA) 1385 (Bd Pat App & Int, 2005) (designated precedential opinion).
[39] Knight, ‘A Patently Novel Plot’, above n 1, 207–12. This argument is made only in Knight’s 2006 article, which appears to have been written in response to criticism of his 2004 article.
[40] Knight, ‘A Patently Novel Plot’, above n 1, 210–12.
[41] Ibid 212.
[42] Ibid 212–13.
[43] Ibid.
[44] 35 USC § 101 sets out what is patentable subject matter. The provision provides for four categories of patentable subject matter: ‘Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.’
[45] Knight, ‘A Potentially New IP’, above n 2, 867.
[46] Ibid 863–6. Knight identifies Re Gulack[1983] USCAFED 83; , 703 F 2d 1381, 1385 (Smith J for Baldwin and Smith JJ) (Fed Cir, 1983) and Re Lowry, 32 F 3d 1579, 1583 (Rader J for Rich J, Skelton SCJ and Rader J) (Fed Cir, 1994) as the judicial source of the printed matter doctrine and the United States Patent and Trademark Office, Manual of Patent Examining Procedure (2008) as a source for a related or identical doctrine.
[47] Knight, ‘A Potentially New IP’, above n 2, 860.
[48] Ibid 867, quoting US Patent Application 20050244804 (filed 28 November 2003).
[49] Ibid 868.
[50] Ibid 870.
[51] Ibid 869.
[52] Ibid.
[53] See Lionel Bently and Brad Sherman, Intellectual Property Law (2001) 310:
the image of the invention as the human intervention into nature that brings about a resulting physical change that underpins much contemporary jurisprudence, was well entrenched in British law by the mid‑nineteenth century.
Robert P Merges, ‘As Many as Six Impossible Patents before Breakfast: Property Rights for Business Concepts and Patent System Reform’ (1999) 14 Berkeley Technology Law Journal 577, 585:
For Thomas Jefferson and his cohorts, a piece of technology was readily identifiable: it had substance, and moving parts, and did something out in the practical world of farming or manufacturing. At the very least, for Jefferson, if you put technology in a bag and shook it, it would make some noise.
Maurer, above n 34, 1057:
When people think of patented inventions they probably think about well‑tooled, oily parts that make machines run — something they can put their hands on, weigh with dead reckoning, and intuitively understand.
[54] See United States Patent and Trademark Office, Class 705 Application Filing and Patents Issued Data (January 2009) <http://www.uspto.gov/web/menu/pbmethod/applicationfiling.htm> Re Bilski, 545 F 3d 943, 1004 (Mayer J) (Fed Cir, 2008); Douglas L Price, ‘Assessing the Patentability of Financial Services and Products’ (2004) 3 Journal of High Technology Law 141, 153 (‘[t]he State Street case has opened the floodgates on business method patents’); Peter H Kang and Kristin A Snyder, ‘A Practitioner’s Approach to Strategic Enforcement and Analysis of Business Method Patents in the Post‑State Street Era’ (2000) 40 IDEA 267, 278; Josephine Chinying Lang, ‘Management of Intellectual Property Rights: Strategic Patenting’ (2001) 2(1) Journal of Intellectual Capital 8.
[56] Patents Act 1990 (Cth) s 18(1). The requirements for an innovation patent are similar, but the requirement for an inventive step is replaced by the need for an innovative step: s 18(1A). An innovation patent is a second-tier patent that is intended to provide less expensive monopoly rights for lower level or incremental inventions for a shorter period than for a standard patent. Note also that the expression ‘patentable invention’ is defined in the Dictionary in sch 1 as ‘an invention of the kind mentioned in section 18.’
[57] NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655, 663–4 (Brennan, Deane and Toohey JJ).
[58] Ibid. At the time this case was decided the introductory words in s 18(1) read: ‘a patentable invention is an invention that …’. This wording has subsequently been amended by the Patents Amendment (Innovation Patents) Act 2000 (Cth) to state: ‘an invention is a patentable invention … if …’. It is suggested that the ‘threshold requirement’ of inventiveness remains notwithstanding this change to the wording.
[59] Patents Act 1990 (Cth) sch 1.
[60] NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655, 664–6 (Brennan, Deane and Toohey JJ). Cf Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274, 291–2 (Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ). See also Griffin v Isaacs (1938) 12 ALJR 169, 170, where Dixon J held that if the subject matter of a working invention were to be indistinguishable in merit or principle from an existing invention, it would not possess the newness or threshold inventiveness required of a manner of new manufacture. See generally Gum v Stevens [1923] HCA 48; (1923) 33 CLR 267.
[61] Patents Act 1990 (Cth) s 40(2)(a).
[62] Samuel Taylor Pty Ltd v SA Brush Co Ltd [1950] HCA 44; (1950) 83 CLR 617, 623–4 (Latham CJ), 625 (McTiernan J), 626 (Webb J); Kimberly‑Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1, 16–17 (Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ), quoting No‑Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231, 243 (Romer LJ); Decor Corporation Pty Ltd v Dart Industries Inc [1988] FCA 399; (1988) 13 IPR 385, 397–9 (Sheppard J); AMP Incorporated v Utilux Pty Ltd (1971) 45 ALJR 123, 128 (McTiernan J); Valensi v British Radio Corporation [1973] RPC 337, 376–7 (Russell, Buckley and Cairns LJJ).
[63] CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396; (1994) 51 FCR 260, 277 (Spender, Gummow and Heerey JJ).
[64] Patents Act 1990 (Cth) s 13.
[65] Patents Act 1990 (Cth) sch 1.
[66] Steers v Rogers [1893] UKLawRpAC 13; [1893] AC 232, 235 (Lord Herschell LC).
[67] [1959] HCA 67; (1959) 102 CLR 252.
[68] Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62, 64 (Heerey, Kiefel and Bennett JJ).
[69] [1972] HCA 38; (1972) 126 CLR 611, 616.
[70] [1994] FCA 396; (1994) 51 FCR 260, 287 (Spender, Gummow and Heerey JJ). The decision has also been accepted as good law and followed in New Zealand: see Swift & Co v Commissioner of Patents [1960] NZLR 775 (‘Swift’). The Australian and New Zealand decisions have also been considered in the United Kingdom: United Kingdom, The British Patent System: Report of the Committee to Examine the Patent System and Patent Law, Cmnd 4407 (1970) 64, where it was stated that ‘[w]e have no reason to suppose that the United Kingdom Courts will not in future take the liberal view of patentable inventions which was taken by the Australian and New Zealand Courts [in NRDC and Swift]’. The same conclusion was reached by the Australian Industrial Property Advisory Committee in its review of the Statute of Monopolies‑based model of inherent patentability prior to the introduction of the Patents Act 1990 (Cth): see Industrial Property Advisory Committee, Patents, Innovation and Competition in Australia (1984) 39–41.
[71] NRDC [1959] HCA 67; (1959) 102 CLR 252, 269 (Dixon CJ, Kitto and Windeyer JJ).
[72] Ibid 275, citing Re Lenard’s Application (1954) 71 RPC 190, 192 (Lloyd‑Jacob J).
[73] NRDC [1959] HCA 67; (1959) 102 CLR 252, 275 (Dixon CJ, Kitto and Windeyer JJ), citing Re Virginia‑Carolina Chemical Corporation’s Application [1958] RPC 35, 36 (Lloyd‑Jacob J).
[74] NRDC [1959] HCA 67; (1959) 102 CLR 252, 262–4, 275 (Dixon CJ, Kitto and Windeyer JJ).
[75] (1901) 19 RPC 53, 54.
[76] [1959] HCA 67; (1959) 102 CLR 252, 275–6 (Dixon CJ, Kitto and Windeyer JJ).
[77] Australian Patent Office, Manual of Practice and Procedures (2006) vol 2, [2.9.2.4] (‘Fine Arts’).
[78] Ibid. For examples of arrangements of literary or artistic content possessing the mechanical inventiveness required of an invention, see Re Fishburn’s Application (1938) 57 RPC 245 (which involved a method of arranging a cinema ticket so that it could be torn in half either way, with all necessary information appearing on either half); Re Cooper’s Application (1901) 19 RPC 53 (which involved an improved form of newspaper page featuring a blank space along which the page could be folded so as to avoid the trouble involved in reading over the folded part of the paper).
[79] Examples of art and entertainment related inventions can be found at Internet Patent News Service, Patent Database, Patenting Art and Entertainment <http://www.patenting‑art.com/
database>, which lists over 100 industrial-type applications that are used in relation to creating art.
[80] Any patentable process must be repeatable. To be repeatable in this sense means that, when the process is performed by a person skilled in the relevant art, the result must be substantially repeatable or the process must substantially produce the same result each time it is performed. If the process does not produce substantially similar results when performed then it is not ‘useful’ as it will not be capable of delivering the result promised in the patent specification. There is no requirement that a process be exactly repeatable or produce exactly the same result each time it is performed; so long as the result achieved is consistent with the result promised by the inventor then the disclosure requirements will have been met and the process will be ‘useful’: Badische Anilin und Soda Fabrik v Levinstein [1887] UKLawRpAC 32; (1887) 12 App Cas 710, 712 (Lord Halsbury LC); Mentor Corporation v Hollister Inc [1993] RPC 7; Lane‑Fox v The Kensington and Knightsbridge Electric Lighting Co (Ltd) (1892) 9 RPC 413, 417–18 (Lindley LJ), 421 (Kay LJ). See also Biogen Inc v Medeva plc [1996] UKHL 18; [1997] RPC 1, 26–7 (P Prescott QC); Re Swartz[2000] USCAFED 214; , 232 F 3d 862 (Fed Cir, 2000).
[81] Knight, ‘A Potentially New IP’, above n 2, 871–3.
[82] Ibid 873.
[83] [1959] HCA 67; (1959) 102 CLR 252, 277 (Dixon CJ, Kitto and Windeyer JJ).
[84] See above n 48 and accompanying text.
[85] Knight, ‘A Potentially New IP’, above n 2, 869.
[86] [2006] FCAFC 120; (2006) 154 FCR 62.
[87] Ibid 70 (Heerey, Kiefel and Bennett JJ).
[88] Ibid 64; Australian Innovation Patent No 2003100074 (filed 7 February 2003) 2–3.
[89] See Australian Innovation Patent No 2003100074 (filed 7 February 2003).
[90] It was described in this way by the trial judge: Grant v Commissioner of Patents [2005] FCA 1100; (2005) 67 IPR 1, 2–3, 6 (Branson J).
[91] Grant [2006] FCAFC 120; (2006) 154 FCR 62, 73 (Heerey, Kiefel and Bennet JJ).
[92] 545 F 3d 943 (Fed Cir, 2008). The case was decided by a 9:3 majority (Michel CJ, Lourie, Schall, Bryson, Gajarsa, Linn, Dyk, Prost and Moore JJ). Bilski’s claims involved a method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price: at 949 (Michel CJ for Michel CJ, Lourie, Schall, Bryson, Gajarsa, Linn, Dyk, Prost and Moore JJ). The ‘physical steps’ test was rejected: at 960–1; the appellant’s method claims were completely devoid of physical apparatus: at 963–4. Bilski then petitioned the United States Supreme Court seeking a writ of certiorari, which was granted: Bilski v Doll, 129 S Ct 2735 (2009). The ‘machine‑or‑transformation’ test is a creation of the Court of Appeals for the Federal Circuit, rather than a mere application of the existing law: see the dissenting opinion of Newman J in Re Bilski, 545 F 3d 943, 976 (Fed Cir, 2008); Benjamin J McEniery, ‘The Federal Circuit in Bilski: The Machine‑or‑Transformation Test’ (2009) 91 Journal of the Patent and Trademark Office Society 253.
[93] Re Bilski, 545 F 3d 943, 954 (Michel CJ for Michel CJ, Lourie, Schall, Bryson, Gajarsa, Linn, Dyk, Prost, and Moore JJ) (Fed Cir, 2008).
[94] Ibid 964–6.
[95] See Ben McEniery, ‘Patents for Intangible Inventions in Australia after Grant v Commissioner of Patents’ (Pt 1) (2007) 13 Computer and Telecommunications Law Review 70; Ben McEniery, ‘Patents for Intangible Inventions in Australia after Grant v Commissioner of Patents’ (Pt 2) (2007) 13 Computer and Telecommunications Law Review 100.
[96] Re Bilski, 545 F 3d 943, 976 (Newman J), 998 (Mayer J), 1011 (Rader J) (Fed Cir, 2008).
[97] See above n 85 and accompanying text.
[98] [1978] USSC 129; 437 US 584, 590 (Stevens J for Brennan, White, Marshall, Blackmun, Powell and Stevens JJ) (1978).
[99] [1981] USSC 40; 450 US 175, 191–2 (Rehnquist J for Burger CJ, Stewart, White, Powell and Rehnquist JJ) (1981), citing ibid 586.
[100] Diamond v Diehr[1981] USSC 40; , 450 US 175, 193 (Rehnquist J for Burger CJ, Stewart, White, Powell and Rehnquist JJ) (1981).
[101] Ibid 215 (Stevens J for Brennan, Marshall and Blackmun JJ).
[102] See, eg, Parker v Flook[1978] USSC 129; , 437 US 584, 590 (Stevens J for Brennan, White, Marshall, Blackmun, Powell and Stevens JJ).
[103] See, eg, Burroughs Corporation (Perkins’) Application [1974] RPC 147, 158 (Graham J); International Business Machines Corporation’s Application [1980] FSR 564, 572 (Whitford J); Re Beauregard[1995] USCAFED 610; , 53 F 3d 1583 (Fed Cir, 1995). See generally Re Alappat, 33 F 3d 1526 (Fed Cir, 1994); International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1991) 33 FCR 218; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396; (1994) 51 FCR 260.
[104] Note, ‘Pure Fiction: The Attempt to Patent Plot’ (2005) 19 Harvard Journal of Law and Technology 231, 235–41, 237 (Melissa Patterson authored the note; her name was provided by the editor upon request).
[105] Knight, ‘A Patently Novel Plot’, above n 1, 207–8.
[106] United States Constitution art 1 § 8 cl 8.
[107] Graham v John Deere Co[1949] USSC 95; , 383 US 1, 5–6 (Clark J for Warren, Harlan, Brennan, Black, Clark, White, Douglas and Stewart JJ) (1966); Bonito Boats Inc v Thunder Craft Boats Inc[1989] USSC 20; , 489 US 141, 146 (O’Connor J for the Court) (1989).
[108] Robert I Coulter, ‘The Field of the Statutory Useful Arts’ (Pt II) (1952) 34 Journal of the Patent Office Society 487, 496; Alan Durham, ‘“Useful Arts” in the Information Age’ [1999] Brigham Young University Law Review 1419, 1431–7; Richard H Stern, ‘Being within the Useful Arts as a Further Constitutional Requirement for US Patent‑Eligibility’ (2009) 31 European Intellectual Property Review 6, 13–15.
[109] Re Musgrave, 431 F 2d 882, 893 (Rich J for Rich, Almond, Lane and Rosenstein JJ) (CCPA, 1970). The Court in Re Musgrave cites no authority for the proposition that the ‘technological arts’ and ‘useful arts’ are equivalent, while Re Musgrave itself is cited as authority for the proposition in subsequent opinions. See also Re Waldbaum, 457 F 2d 997, 1003 (Baldwin J for Almond, Baldwin, Lane and Rao JJ) (CCPA, 1972): ‘The phrase “technological arts,” as we have used it, is synonymous with the phrase “useful arts” as it appears in Article I, Section 8 of the Constitution’. Rich J concurred: at 1003–4. Arguably the most exhaustive attempt to define ‘useful arts’ is found in Robert I Coulter’s three part series: Robert I Coulter, ‘The Field of the Statutory Useful Arts’ (Pt I) (1952) 34 Journal of the Patent Office Society 417; Coulter, ‘The Field of the Statutory Useful Arts’ (Pt II), above n 108; Robert I Coulter, ‘The Field of the Statutory Useful Arts’ (Pt III) (1952) 34 Journal of the Patent Office Society 718. See also Karl B Lutz, ‘Patents and Science: A Clarification of the Patent Clause of the US Constitution’ (1949) 18 George Washington Law Review 50, 54; Durham, above n 108, 1437; John R Thomas, ‘The Patenting of the Liberal Professions’ (1999) 40 Boston College Law Review 1139, 1140.
[110] Graham v John Deere Co[1949] USSC 95; , 383 US 1, 5–6 (Clark J for Warren, Harlan, Brennan, Black, Clark, White, Douglas and Stewart JJ) (1966) (citations omitted):
At the outset it must be remembered that the federal patent power stems from a specific constitutional provision which authorizes the Congress ‘[t]o promote the Progress of … useful Arts …’ The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the ‘useful arts.’ … The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose.
See also Re Yuan, 188 F 2d 377, 380 (Garrett CJ for Garrett CJ, Jackson, O’Connell, Johnson and Worley JJ) (CCPA, 1951) (‘[i]t is interesting to note that this particular grant is the only one of the several powers conferred upon the Congress which is accompanied by a specific statement of the reason for it’); Ex parte Lundgren, 76 USPQ 2d (BNA) 1385, 1388 (Smith J) (Bd Pat App & Int, 2005) (designated precedential opinion); Ex parte Bilski, Appeal No 2002–2257,
69–70 (Barrett J) (Bd Pat App & Int, 2006); Durham, above n 108, 1426; Malla Pollack, ‘The Multiple Unconstitutionality of Business Method Patents: Common Sense, Congressional Consideration, and Constitutional History’ (2002) 28 Rutgers Computer and Technology Law Journal 61, 118–19.
[111] See Thomas, ‘The Patenting of the Liberal Professions’, above n 109, 1140; John R Thomas, ‘The Post‑Industrial Patent System’ (1999) 10 Fordham Intellectual Property, Media & Entertainment Law Journal 3, 7; Durham, above n 108, 1513; Thomas F Cotter, ‘A Burkean Perspective on Patent Eligibility’ (2007) 22 Berkeley Technology Law Journal 855, 871–2.
[112] See Ex parte Lundgren, 76 USPQ 2d (BNA) 1385, 1400–1 (Smith J) (Bd Pat App & Int, 2005) (designated precedential opinion); Ex parte Bilski, Appeal No 2002–2257, 19 (Barrett J) (Bd Pat App & Int, 2006).
[113] See, eg, Re Bilski, 545 F 3d 943, 998 (Mayer J) (Fed Cir, 2008); Re Grant [2004] APO 11 (Unreported, Deputy Commissioner Herald, 26 May 2004) [25]; Re Peter Szabo & Associates Pty Ltd (2005) 66 IPR 370, 377 (Deputy Commissioner Herald); William van Caenegem, ‘The Technicality Requirement, Patent Scope and Patentable Subject Matter in Australia’ (2002) 13 Australian Intellectual Property Journal 41.
[114] [2006] FCAFC 120; (2006) 154 FCR 62, 71 (Heerey, Kiefel and Bennett JJ): ‘We think that to erect a requirement that an alleged invention be within the area of science and technology would be to risk the very kind of rigidity which the High Court warned against.’
[115] van Caenegem, above n 113, 51–2. In this article van Caenegem asserts that NRDC and associated case law discloses a technicality requirement.
[116] [2006] FCAFC 120; (2006) 154 FCR 62, 68 (Heerey, Kiefel and Bennett JJ), where, while referring to the decision of Heerey J in Welcome Real‑Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110, the Full Court said that ‘[h]is Honour drew a distinction between a technological innovation which is patentable and a business innovation which is not.’
[117] NRDC [1959] HCA 67; (1959) 102 CLR 252, 275 (Dixon CJ, Kitto and Windeyer JJ), citing Re Lenard’s Application (1954) 71 RPC 190, 192 (Lloyd‑Jacob J). Lloyd‑Jacob J also equated the word ‘vendible’ with things of ‘commercial value’ in Re Elton and Leda Chemicals Ltd’s Application [1957] RPC 267, 269.
[118] See above nn 86–93 and accompanying text.
[119] Patents Act 1990 (Cth) s 18(1)(b)(i).
[120] Patents Act 1990 (Cth) s 18(1), sch 1.
[121] Patents Act 1990 (Cth) s 7, sch 1.
[122] Patents Act 1990 (Cth) s 7(1)(b).
[123] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, 235 (Aickin J).
[124] Ibid (citations omitted).
[125] Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367, 391 (Lord Upjohn).
[126] Patents Act 1990 (Cth) s 7(2) (in relation to an ‘inventive step’); see also ss 7(4)–(5) (in relation to an ‘innovative step’).
[127] Patents Act 1990 (Cth) s 7(3).
[128] Patterson, above n 104, 231–2.
[129] Booker describes his seven plots as very broad themes, such as ‘overcoming the monster’ (which includes Beowulf, Jaws, Little Red Riding Hood, and various Bond films), ‘rags to riches’ (which includes Cinderella, The Ugly Duckling, and David Copperfield), and ‘voyage and return’ (which includes Robinson Crusoe, Alice’s Adventures in Wonderland, and The Time Machine): Christopher Booker, The Seven Basic Plots: Why We Tell Stories (2004) 1, 21–2, 25, 38, 52, 88, 90, 92.
[130] Patterson, above n 104, 231.
[131] Jessica Litman, ‘The Public Domain’ (1990) 39 Emory Law Journal 965, 966–7.
[132] See Knight, ‘A Potentially New IP’, above n 2, 874–5, citing US Patent Application 20050244804 (filed 28 November 2003).
[133] Ben Manevitz, ‘What’s the Story with Storyline Patents — An Argument against the Allowance of Proposed Storyline Patents and for the Rejection of Currently Pending Storyline Patent Applications’ (2006) 24 Cardozo Arts and Entertainment Law Journal 717, 732–6; Greg Aharonian, ‘Patenting Movies and Music?’ (2005) 27(7) Entertainment Law Reporter 4, 4. The specific claims to particular plots Knight has made can be found in the United States patent applications set out at above n 1.
[135] Patents Act 1990 (Cth) s 40(2)(a).
[136] Patents Act 1990 (Cth) s 40(3).
[137] Patents Act 1990 (Cth) ss 18(1)(c), (1A)(c). Usefulness is not an express requirement for examination of a standard Australian patent application. Therefore, the Commissioner of Patents does not have to be satisfied that an invention is useful under s 18(1)(c) before accepting a patent application: s 49(1). For innovation patents, s 18(1A)(c) is not a ground for revocation: s 101B(2). Usefulness is a ground for revocation of a standard patent under s 138(3)(b), but is not a ground upon which a patent may be opposed and is not referred to on re‑examination.
[138] Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1998) 194 CLR 171, 187 (Brennan CJ, Gaudron, McHugh and Gummow JJ); Abbott Laboratories v Corbridge Group Pty Ltd [No 2] [2001] FCA 810 (Unreported, Gyles J, 29 June 2001) [22]. Note that art 17.9.1 of the Australia–United States Free Trade Agreement, signed 18 May 2004, [2005] ATS 1 (entered into force 1 January 2005), defines ‘useful’ as meaning ‘of industrial application.’ This definition is quite problematic as it differs from the current case law.
[139] [1966] USSC 48; 383 US 519, 536 (Fortas J for Warren, Fortas, Harlan, Brennan, Black, Stewart, Clark, White and Douglas JJ) (1966).
[140] Patterson, above n 104, 242.
[141] Subcommittee on Patents, Trademarks and Copyrights, US Senate Committee on the Judiciary (prepared by Fritz Machlup), An Economic Review of the Patent System (1958) 33. See generally Joseph A Schumpeter, Capitalism, Socialism, and Democracy (2nd ed, 1942) chs VII–IX;
Staniforth Ricketson, The Law of Intellectual Property (1984) 7; Stanley M Besen and Leo J Raskind, ‘An Introduction to the Law and Economics of Intellectual Property’ (1991) 5(1) Journal of Economic Perspectives 3, 5; Leo J Raskind, ‘The State Street Bank Decision: The Bad Business of Unlimited Patent Protection for Methods of Doing Business’ (1999) 10 Fordham Intellectual Property, Media and Entertainment Law Journal 61, 67.
[142] William D Nordhaus, Invention, Growth, and Welfare: A Theoretical Treatment of Technological Change (1969) ch 1; Mark A Lemley, ‘Ex Ante versus Ex Post Justifications for Intellectual Property’ (2004) 71 University of Chicago Law Review 129, 129–30; Richard Gilbert and Carl Shapiro, ‘Optimal Patent Length and Breadth’ (1990) 21 RAND Journal of Economics 106, 106. It should be recognised that the patent incentive does not solely relate to providing an incentive for innovation, but has now moved to providing an incentive for invention and the commercialisation of new products: Subcommittee on Patents, Trademarks and Copyrights, above n 141,
36–8.
[143] United States Federal Trade Commission, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy (2003) 1, citing Federal Reserve Board Vice Chairman Roger W Ferguson Jr, ‘Patent Policy in a Broader Context’ (Speech delivered at the 2003 Financial Markets Conference of the Federal Reserve Bank of Atlanta, Sea Island, Georgia, 5 April 2003): ‘innovation benefits consumers through the development of new and improved goods, services, and processes. An economy’s capacity for invention and innovation helps drive its economic growth and the degree to which standards of living increase.’
[144] James Boyle, ‘The Second Enclosure Movement and the Construction of the Public Domain’ (2003) 66(1– 2) Law and Contemporary Problems 33, 37. For opinions on the importance of maintaining the public domain when new intellectual property interests are recognised, see generally David Lange, ‘Recognizing the Public Domain’ (1981) 44(4) Law and Contemporary Problems 147; Litman, above n 131; Yochai Benkler, ‘Free as the Air to Common Use: First Amendment Constraints on Enclosure of the Public Domain’ (1999) 74 New York University Law Review 354.
[145] Suzanne Scotchmer, ‘Standing on the Shoulders of Giants: Cumulative Research and the Patent Law’ (1991) 5(1) Journal of Economic Perspectives 29, 29–30.
[146] Graham v John Deere Co[1949] USSC 95; , 383 US 1, 5–6 (Clark J for Warren, Harlan, Brennan, Black, Clark, White, Douglas and Stewart JJ) (1966); Gottschalk v Benson[1972] USSC 223; , 409 US 63, 67 (Douglas J for Burger CJ, Douglas, Brennan, White, Marshall and Rehnquist JJ) (1972). See generally Thomas, ‘The Patenting of the Liberal Professions’, above n 109; Thomas, ‘The Post‑Industrial Patent System’, above n 111; John R Thomas, ‘Liberty and Property in the Patent Law’ (2002) 39 Houston Law Review 569.
[147] Knight, ‘A Potentially New IP’ above n 2, 871 (emphasis in original).
[148] Ibid 860–1 (emphasis in original).
[149] See, eg, Maurer, above n 34.
[150] See Litman, above n 131, 969: ‘When individual authors claim that they are entitled to incentives that would impoverish the milieu in which other authors must also work, we must guard against protecting authors at the expense of the enterprise of authorship.’
[151] Patterson, above n 104, 248–9.
[152] SunTrust Bank v Houghton Mifflin Co[2001] USCA11 368; , 268 F 3d 1257, 1270 (Birch J for Birch, Marcus and Wood JJ) (11th Cir, 2001). The Court stated that ‘based upon our analysis of the fair use factors we find, at this juncture, [The Wind Done Gone] is entitled to a fair‑use defense’: at 1276. The Court also agreed (at 1267) that The Wind Done Gone ‘is largely an encapsulation of [Gone With the Wind that] exploits its copyrighted characters, story lines, and settings as the palette for the new story’, quoting SunTrust Bank v Houghton Mifflin Co, 136 F Supp 2d 1357, 1367 (Pannell DJ) (ND Ga, 2001).
[153] SunTrust Bank v Houghton Mifflin Co[2001] USCA11 368; , 268 F 3d 1257, 1259 (Birch J for Birch, Marcus and Wood JJ) (11th Cir, 2001).