ing and therefore only the most important phases have been treated.

As to the field of search in the art of petroleum refining no detailed account will be given since the class that contains practically all of it, Class 196, Mineral Oils is now being reclassified so that such an account will have no permanent value.

RELATION OF PATENT LAW TO NATURAL
PRODUCTS.

By HAROLD C. THORNE.

There are numerous societies and organizations both. in this country and abroad which are interested in finding some means of affording protection or for awarding those individuals who are devoting their time and energy to plant propagation in order to promote the work in these lines. Briefly stated, there are several situations which present themselves, such as new varieties of fruits, grains and vegetables, discovered and propagated by scientific means, likewise the protection of trees and orchards and the curing them of diseases.

This paper has for its purpose to set forth in general the status of existing Federal laws with respect to granting patent protection for plants and other "natural products" and to present the case for consideration.

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The provision of the Constitution of the United States is that the Congress shall have power to promote the progress of Science and Useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries". (Art. I, sec. 8.) However broad in its scope, there is no provision in this section as interpreted in the statutes and decisions which affords protection or rewards for services such as those above referred to.

The case of Ex parte Latimer, (46 O. G. 1638, C. D. 1889, page 123), decided March 26, 1889 by Commissioner Hall, sets forth the general stand taken in these matters. The following extracts therefrom will serve to indicate the reasons why patents are not granted for natural products:

* It can not be said that the applicant in this case has made any discovery, or is entitled to patent the idea or fact, rather, that fiber can be found in the needle of the Pinus australis, or that it is a longer fiber than can be found in other leaves, or that it possesses more or less strength or fineness, because the mere ascertaining of the character or quality of trees that grow in the forest and the construction of the woody fiber and tissue of which they are composed is not a patentable invention, recognized by the statute, any more than to find a new gem or jewel in the earth would entitle the discoverer to patent all gems which should be subsequently found, so that generally it may be said that fiber such as is described in this application is old, and even if such were not the fact and this were the first time that man had discovered that a fiber existed in the leaves and needles of the trees which could be removed by certain processes and made use of for mankind, it is doubtful whether the invention would consist of anything more than the process by which the fiber could be taken from the natural leaf or needle in which it is produced by natural processes. Otherwise it would be possible for an element or principle to be secured by patent and the patentee would obtain the right, to the exclusion of all other men, of securing by his new process from the trees of the forest (in this case the Pinus australis) the fiber which nature has produced and which nature has intended to be equally for the use of all men. The result would be that an alleged inventor in Germany would acquire a patent which would give him the exclusive use of the Pinus sylvestris, the applicant in this case would secure a patent for the fiber of the Pinus australis, and thus successively, patents might be obtained upon the trees of the forests and the plants of the earth, which of course would be unreasonable and impossible.

*

It is a natural product and can no more be the subject of a patent in its natural state when freed from its surroundings than wheat which has been cut by a reaper or by some new method of reaping can be patented as wheat cut by such a process.

"I have given this application no little consideration, and have experienced an anxiety, if possible, to secure to the applicant a patent. The alleged invention is unquestionably very valuable, and one, according to the statements presented to me, of immense benefit to the people of the country in which the Pinus australis grows. The fiber, it is said, is stronger, more durable, and can be produced at much less expense than jute, and will undoubtedly supersede that article in the manufacture of many fabrics; but while the production may be thus regarded as a very valuable one, the invention resides, I am compelled to say, exclusively in the process and not at all in the product.

"If applicant's process had another final step by which the fiber thus withdrawn or separated from the leaf or needle in its natural state were changed, either by curling it or giving it some new quality or function which it does not possess in its natural condition as fiber, the invention would probably cover a product, because the natural fiber, passing through the exigensies of such a process would be treated and become something new or different from what it is in its natural state. Natural fibers, hair, and many other substances have been allowed as patentable products which have been changed by some such treatment; but I am not aware of any instance in which it has been held that a natural product is the subject of a patent, although it may have existed from creation without being discovered."

As stated at the end of the decision, if the products had been acted upon so as to change their character, the product in its changed form would fall into the class of patentable subject matter. It will be further seen from the decision that plants and animal organisms, even though very valuable uses may be discovered for them, or they may have been obtained by the aid of scientific management in their propagation, grow as natural products, and as such they are not discoveries which are subject to patentable protection. Attention is directed to extracts from the decision William T. G. Morton vs. The New York Eye Infirmary, (5 Blatch, page 116 of 1862, and Fisher's Cases, page 320).

"In its naked ordinary sense, a discovery is not patentable. A discovery of a new principle, force, or law, operating, or which can be made to operate, on matter, will not entitle the discoverer to a patent. It is only where the explorer has gone beyond the mere domain of discovery, and has laid hold of the new principle, force, or law, and has connected it with some particular medium or mechanical contrivance, by which, or through which, it acts on the material world, that he can secure the exclusive control of it under the Patent Act. He then controls his discovery through the means by which he has brought it into practical action, or their equivalent, and only through them." **

*

"Its discoverer is entitled to be classed among the greatest benefactors of mankind. But the beneficent and imposing character of the discovery cannot change the legal principles upon which the law of patents is founded, nor abrogate the rules by which judicial construction must be governed. These principles and rules are fixed, and uninfluenced by shades and degrees of comparative merit. They secure to the inventor a monopoly in the manufacture, use, and sale of very humble contrivances, of limited usefulness, the fruits of indifferent skill and trifling ingenuity, as well as of those grander products

of his genius which confer renown on himself and extensive and lasting benefits on society. But they are inadequate to the protection of every discovery, by securing its exclusive control to the explorer to whose eye it may be first disclosed. A discovery may be brilliant and useful, and not patentable. No matter through what long, solitary vigils, or by what importunate effects, the secret may have been wrung from the bosom of nature, or to what useful purposes it may be applied, something more is necessary. The new force or principle brought to light must be embodied and set to work, and can be patented only in connection or combination with the means by which, or through which, it operates. Neither the natural functions of an animal, upon which or through which it may be designed to operate, nor any of the useful purposes to which it may be applied, can form any essential part of the combination, however they may illustrate and establish its usefulness."

In the case of Wahl vs. Leck (66 Fed. Rep. 552), it is further shown that discoveries involving natural products and treatment of plants are not subject to patent protection, wherein the process involved is dependent upon conditions in nature. In this case Wahl was suing upon his patent 445,342, for a process of fumigating trees, which consisted in fumigating with hydrocyanic acid gas in the absence, substantially, of the actinic rays of light. The following statements from the decision are of particular interest,

"No natural function of the day or of the night, of the sun or of the moon, is patentable. These natural conditions are as free to all mankind as is the air we breathe. The broad canopy of heaven can be used in the daytime, or the night time, and at all times, in sunshine or in darkness, by everybody in the presence or the absence of any rays of light, or any condition of the atmosphere. A principle, considered as a natural physical force, is not the product of inventive skill. It is the common property of all mankind. It exists in nature independently of human effort, and can neither be diminished nor increased by human power. Man can discover and employ it, but his employment of it in the modes or through the instrumentalities by which it is applied in nature is a mere imitation of what every man is able to perceive and reproduce as well as he. All endeavors to confine it to himself are at once futile and unjust. It exists for all men, as well after his discovery as before. The laws necessarily recognize and protect this right, and do not permit any man to exclusively use the conditions which are the gifts of nature, simply because he was the first one to discover its value. Not until some new instrument or method is contrived for its direction towards ends which it cannot naturally accomplish does his creative genius manifest itself."

Products of nature are not subject to protection of patents for invention in the United States or in foreign countries. In Austria food products and objects of consumption (Genussmittel) for the human race and other products obtained by chemical means are excluded from patent protection but particular technical processes for obtaining them may be patentable; the same is the case in Germany, Hungary, Japan, Sweden, and other countries. In Mexico "a discovery or invention that simply consists in making known or rendering evident something which had already existed in nature although it had been unknown to man before the invention" is not patentable, and in Spain "Products obtained directly from the earth or from cattle" cannot be patented. Great Britain and her colonies have the same laws in regard to patentable products as have been adopted in the United States.

Food products may be patentable in the United States if they can be considered as "Compositions of Matter" and "be able to endure the relevant tests of invention, novelty, and utility." This class includes foods such as artificial butter, and other food compounds, but not such compounds as occur in nature.

In setting forth these laws and decisions, it is not intended to be adverse toward promoting the industries in plant propagation and animal propagation which are so closely allied by stimulating the work with a patent system, but merely to point out the difficulties which would be encountered in granting "patent" protection of the character which has been granted to "inventors," so called in our Constitution and Statutes.

As a suggestion for taking care of such matters, attention is called to other systems of awards made in this country, as land grants and mining claims. The Department of Agriculture might be able to have laws enacted on behalf of the plant propagators for compensating them for their valuable discoveries and services in a similar manner. But it would be dangerous to adopt a patent