Manvi Goel, Jindal Global Law School

Devesh Singh, Army Institute of Law, Mohali

Nithya Sowmya M., Tamil Nadu National Law University


Puru Pratap Singh, GNLU


The patent system that we see today in the world is a result of many verdicts and decisions that changed the course of history for patent law. While some verdicts shaped laws of patentability on genetically modified organisms, other helped in redefining the criterions for the determination of patent eligibility. With this fast evolving world there is a regular need to amend the patent laws so that the interest of inventors can be safeguarded and these judgements helped in shaping those laws significantly. Following are some landmark judgements which played a massive role in setting the course of patent law all over the world.

1. Diamond v. Chakraborty 447 US 303 1980:

Diamond v. Chakraborty[1] was a United States Supreme Court case which dealt with the issue whether genetically modified organisms can be patented or not.


The facts were that the respondent, Anand Mohan Chakraborty had filed an application to patent his invention of a bacterium-capable of breaking down crude oil. A patent examiner rejected this application on the ground that living things are not patentable subject matter under 101 of title 35 USA, which was supported by Patent Office Board of Appeal. However, United States court of Customs and Pattern overturned the case on the respondent’s favor.


The case was further taken to United States Supreme Court on March 17, 1980 and was decided in the Plaintiff’s favor with 5-4 ruling on June 16, 1980. Chief Justice Warren E. Burger wrote, “Judged in this light, respondent's micro-organism plainly qualifies as patentable subject matter. His claim is to a non-naturally occurring manufacture or composition of matter—a product of human ingenuity.”[2]

2. O’Reilly v. Morse, 1852:

O’Reilly v Morse is also known as The Telegraph Patent Case which states that an abstract idea is not eligible for patent.


The defendant, Henry O’Reilly signed a contract with an agent of the plaintiff, Samuel Morse (the inventor of the electromagnetic telegraph) for a telegraph line between Eastern Seaboard and Great Lakes. However, due to uncertainty in the contract, it led to a court battle between the two parties. There were fourteen challenges that were given by the defendant to the validity of plaintiff’s patent, out of which the eighth one is of highest importance in relation to the case. It stated,

“I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.”[3]


However, the court found the claim way too broad and stated that Morse inappropriately tried to control telecommunication technologies (virtually) and declared the 8th claim of Morse’s Patent void. Moreover, it was stated that the patent was more of an “idea” and did not have any practical implementation of the idea. The rule laid down in this case, was overturned in a relatively recent case of LabCorp v. Metabolite Inc.[4]

3. Newberry v. James[5]:

In this case the English courts acknowledged that an agreement to preserve a non-patented secret was binding. The court considered a request to order specific performance of a manufacturer-supplier agreement. Hence, refraining from disclosing secret medical recipes and manufacture techniques which was learned in the confidence of the inventor.

Even though the court advised the plaintiff to seek damages, since it would have been impossible to seek injunction without revealing the secret. However, this opened a new door for the inventors or manufacturers. Now, they could keep their techniques or recipes as a secret and protect their products without even applying for patent because when an invention is patented the inventor has to mention all the specifications of the invention hence revealing all the secrets.

Later in the US case of Williams v.Williams[6] l, the court upheld the order of injunction. This news changed the patent law and came as a huge support to the inventors as now the inventors could safeguard the secrets of their product without even applying for a patent.

4. City of Elizabeth V. American Nicholson Pavement Co.[7]


In this case the inventor Samuel Nicholson had patented a process for Nicolas Pavement, a system of pavement using wooden Blocks. This method was new amongst the public and became very famous.

The inventor found that the city of Elizabeth and the New Jersey wood Paving Co. is applying his method by using wooden blocks, hence he filed a case of patent infringement. The defendant argued that Nicolas’ patent was invalid as it lacked novelty and had been in public use for over six years.


The judges noted that lack of novelty is not a ground for rejecting a patent. The fact that inventor had no other option than to test his invention on general public excuses him from the general rule. The rule says, a patent cannot be granted if it has been in use for public, since it is a necessary step to determine the strength and durability of his product.

Therefore the public use for the purpose of testing and experimenting with it does not create a bar to patentability.[8] This was considered to be one of the major reliefs to inventors as they can now test their products freely in the real world.

5. Bilski v. Kappos[9]


In this case, the petitioner Bilski, to hedge against fluctuations in the price had developed methods to instruct buyers and sellers of commodity in the energy market which includes a mathematical concept and statistical approach. He filed for patent registration for his methods but the patent office examiner rejected his application stating that it is an abstract theory and also there is no specific apparatus.

New Test Laid Proposed (Later Rejected as a Sole Test)

He appealed to the Court of Appeals for the Federal Circuit (CAFC), his appeal has been rejected and introduced the ‘machine or transformation’ test,

· The claimed process was tied to a particular machine; or

· The process transformed an article into something else and also mentioned as sole test for determining the process of patent.

Bilski filed an appeal in the US Supreme Court against CAFC decision. The court affirmed the decision of CAFC but it rejected that ‘machine or transformation’ test as a sole test of patentability and also rejected its interpretation of the word ‘Process’[10]. It also looked into the rulings in Benson[11], Flook[12] and Diehr[13] case regarding imposition of limitations under patentability. The majority opinion ruled that the business methods can be patentable and minority opinion disagreed to the same. Thus, after the ruling, the United States Patent and Trademark Office issued guidelines that if the method is abstract then it should satisfy M-O-T and if doesn’t satisfy M-O-T then it shouldn’t be abstract.

6. Wyenth V Natural Biologics Inc[14]


Wyeth is one of the world’s most known pharmaceuticals company which has sold the famous drug Premarin in market and for more than sixty years. No company was able to replicate the Brandon process which is used to create the natural substance Premarin. The Natural Biologics Company which was a startup company decided to produce the generic version of Premarin using a chemical process which its CEO who was a former agricultural salesman with no scientific training developed from expired Wyeth Patents and public records. It becomes successful and is widely sold in the market for Premarin. Wyeth brought action against Natural Biologics, Inc for misappropriation of a Trade Secret in violation of the Minnesota Uniform Trade Secrets Act and said that it has illegally acquired its trade process.


After 16 day bench trial and years of discovery, Judge Joan Ericksen of the United States District Court for the District of Minnesota found that the ‘company was built upon misappropriation’ which means that the CEO has conspired with the former scientist of Wyeth to steal the secret of Brandon process and its proved with telephonic conversation evidence. She ordered that the company should be completely shut down, should destruct all its research materials, stop supply of drug and banned its leader in reentering the estrogen replacement market. Her order was appealed in the United States Court of Appeals for the Eighth Circuit but the court subsequently upheld in a unanimous ruling. In this case the court has reviewed the requirements of trade secret law and its applicability, and the injunctive relief to Wyeth because it has incurred irreparable loss.

[1] Diamond v. Chakraborty 447 US 303 1980 [2] Extract from the case of Diamond v Chakraborty 447 US 303 1980 [3] O'Reilly v. Morse - 56 U.S. (15 How.) 62 (1854) [4] LabCorp v. Metabolite Inc. 548 U.S. 124 (2006) [5] Newberry v. James, 2 Merivale 446. [6] Williams v. Williams 3 Mer, 157(1817). [7] City of Elizabeth V. American Nicholson Pavement Co. , 97 US 126(1878). [8] [9] Bilski v. Kappos, 561 U.S. 593 (2010) [10] [11] Gottschalk v. Benson, 409 U.S. 63 (1972) [12] Parker v. Flook, 437 U.S. 584 (1978) [13] Diamond v. Diehr, 450 U.S. 175 (1981)

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