Misplaced Pages

Revision as of 16:58, 8 November 2013

Neilson v Harford (1841) 151 ER 1266 is a 19th-century English patent law decision that several United States Supreme Court patent law opinions rely upon as authority. The question, as Baron Alderson posed it, was “here is the difference between claiming a principle, which is to be carried into effect any way you will, and claiming a mere principle?” The answer, apparently, is nowhere.

Facts

Neilson discovered that a blast furnace for converting high-carbon iron to lower-carbon iron or steel worked better if the air was heated before being blown through the molten iron. He therefore passed the air through a heated chamber on its way to the molten iron.

Judgment

The Exchequer Court rejected the argument that the patent merely covered the principle that furnace temperature could be increased by injecting hot air instead of cold air into the furnace, for the principle of itself could not be patented. It ruled instead that the patent covered the use of the heated chamber. Baron Parke observed,

We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this — by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which was before of cold air, in a heated state to the furnace.

Application

The United States Supreme Court explained the Neilson decision in O’Reilly v. Morse:

It is very difficult to distinguish it from the specification of a patent for a principle, and this at first created in the minds of the Court much difficulty; but after full consideration, we think that the plaintiff does not merely claim a principle, but a machine, embodying a principle, and a very valuable one. We think the case must be considered as if the principle being well known, the plaintiff had first invented a mode of applying it. We think this case must also be considered as if the principle or mathematical formula were well known.

In Parker v. Flook, the Supreme Court emphasized and adopted Baron Parke’s statement in Neilson (repeated in Morse) that “the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus,” which is to say that the abstract idea or natural principle must be considered as if part of the prior art and the invention, if any, is in the mechanical implementation of the principle. Thus, if the implementation is concededly conventional, as it was in Flook, or trivial, as it was in Funk Brothers Seed Co. v. Kalo Inoculant Co., the subject matter cannot be patented.

References

1. See Parker v. Flook, 437 U.S. 584 (1978); Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68 (1895); Tilghman v. Proctor, 102 U.S. 707 (1881); O’Reilly v. Morse. 56 U.S. (15 How.) 62 (1853). See also Laboratory Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124 (2006) (dissenting opinion of Breyer, J.).
2. Neilson, 151 Eng. Rep. at 1272, 8 M. & W. at 820, Web. at 369.
3. It might be thought that, under the machine-or-transformation test, patent-eligibility could be based on the transformation of cast iron to steel. That would fail, however, because the mere transformation of iron into steel was old and well known. But if the transformation would be to an improved quality of iron, perhaps lower carbon iron (as it was), the argument might prevail. It is doubtful that any of the courts considering Neilson had that concept or understood the technology. For a discussion of the point, see Richard H. Stern, Mayo v. Prometheus: No Patents on Conventional Implementations of Natural Principles and Fundamental Truths, [2012 Eur. Intel. Prop. Rev. 502, 503-04 & n.17.
4. 56 U.S. (15 How.) 62 (1853).
5. 437 U.S. 584 (1978).
6. 333 U.S. 127 (1948).

Further reading

• Nicholas Szabo, Elemental Subject Matter (January 10, 2006) -- article on treatment of Neilson in case-law.
• An excerpted version of the case is available at Geo. Wash. L.S.

• 1841 in case law
• Exchequer of Pleas
• United Kingdom patent case law
• 1841 in the United Kingdom