Funk Bros. Seed Co. v. Kalo Inoculant Co.
92 L. Ed. 2d 588, 68 S. Ct. 440 (1948)
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Rule of Law:
The discovery of a naturally occurring principle or phenomenon is not patentable, and the application of that principle is not patentable if the application is merely a well-known or obvious step that does not constitute an invention in itself.
Facts:
- Leguminous plants require root-nodule bacteria of the genus Rhizobium to fix nitrogen from the air.
- Different species of Rhizobium bacteria infect different groups of plants, and historically, these species were known to have an inhibitory effect on one another when mixed.
- Consequently, farmers had to purchase and apply separate inoculants for each type of crop, such as clover, alfalfa, and soy beans.
- A man named Bond discovered that within each species of Rhizobium bacteria, there exist certain strains that are mutually non-inhibitive, meaning they do not harm each other's effectiveness.
- Bond then created a product by selecting and mixing these non-inhibitive strains from several different species into a single inoculant.
- This mixed-culture product allowed farmers to use one inoculant for multiple different leguminous crops.
Procedural Posture:
- The patent holder (respondent) sued Funk Brothers Seed Co. (petitioner) for patent infringement in U.S. District Court.
- Funk Brothers filed a counterclaim seeking a declaratory judgment that the patent was invalid.
- The District Court held the product claims invalid for want of invention, dismissed the complaint, and also dismissed the counterclaim.
- Both parties appealed to the U.S. Circuit Court of Appeals.
- The Circuit Court of Appeals reversed the District Court, holding that the product claims were valid and infringed and that the counterclaim should not have been dismissed.
- Funk Brothers Seed Co. petitioned the U.S. Supreme Court for a writ of certiorari, which was granted.
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Issue:
Does a product claim for an inoculant containing a mixture of naturally occurring, mutually non-inhibitive bacterial strains satisfy the statutory requirements for invention, or is it an unpatentable discovery of a phenomenon of nature?
Opinions:
Majority - Mr. Justice Douglas
No, the product claim does not satisfy the requirements for invention. The discovery that certain strains of bacteria are mutually non-inhibitive is a discovery of a natural principle, which is not patentable. The qualities of the bacteria are the work of nature and are manifestations of laws of nature, free to all. While Bond applied this discovery to a useful end, the application itself—the aggregation of the strains into a single package—lacks invention. The combination creates no new bacteria and does not change or improve the natural function of any of the constituent species. The product is merely an advance in packaging, and once the natural principle of non-inhibition was discovered, creating a mixed culture was a simple and obvious step, not a patentable invention.
Concurring - Mr. Justice Frankfurter
No, the patent is invalid, but the majority's reasoning based on 'the work of nature' is vague and unhelpful. The true defect in the patent is that it is not specific enough. Bond did not patent a specific, identifiable combination of strains; rather, he patented the general idea of combining any compatible strains. The strains are only identifiable by their compatibility, not by any other characteristic. This claim is overly broad and would improperly prevent others from discovering their own, different combinations of compatible strains. The patent fails for want of an adequate description and identification of the specific composition.
Dissenting - Mr. Justice Burton
Yes, the product claim does satisfy the statutory requirements for invention. The patentee discovered the existence of non-inhibitive strains and utilized this discovery to create a novel and commercially successful combination that filled an important agricultural need. This combination is a patentable discovery. Furthermore, the patent's description is sufficient because it describes the strains by their observable effects (non-inhibition), which is the most complete and reasonable way to identify them for practical purposes. An inventor should not be denied a patent simply because the nature of the discovery defies description in conventional terms.
Analysis:
This case is a landmark decision that solidifies the 'product of nature' doctrine in patent law. It establishes a clear distinction between unpatentable natural principles and patentable applications of those principles. The Court's holding clarifies that for an invention based on a natural discovery to be patentable, the application itself must be inventive and not merely an obvious or conventional use of the newfound knowledge. This principle has profound implications for biotechnology, pharmaceutical, and software patents, where inventions often build upon the discovery of natural phenomena, genetic codes, or mathematical algorithms, raising the bar for what constitutes a patentable 'invention' versus an unpatentable 'discovery.'
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