The Sign Doctrine, or What Patents Claiming Printed Diagrams and Computer Models Have in Common

Abstract:     
Semiotics is the study of the sign. Printed diagrams, computer models, and medical symptoms all implicate signs: they are objects or events that stand for something else to interpreters. New signs are enormously valuable tools that promote the “Progress of [the] useful Arts,” yet, surprisingly, patent scholarship has never employed a semiotic lens to understand what can and cannot be patented. As part of a back-to-basics approach to section 101 of the Patent Act, this Article fills this void and articulates a semiotic framework for patent eligibility in the form of the sign doctrine.

One fundamental insight of semiotic analysis is that meanings are not intrinsic in worldly things: they result from active processes of interpretation that occur in the minds of interpreters. Building on this insight, the sign doctrine offers a simple rule that the PTO and the Federal Circuit Court of Appeals can use to distinguish patentable claims to signs from unpatentable ones. If a patent claim describes a meaningful article and but the only invention at issue resides in the mind of an interpreter who has been instructed that the article means something new, the claim does not describe an invention that is eligible for patent protection.

This Article considers two consequences of adopting the sign doctrine. First, the sign doctrine rehabilitates the contemporary printed matter doctrine. The sign doctrine roughly mirrors the printed matter doctrine in terms of its effects on the scope of patentable subject matter. However, by shifting courts’ focus from information to signs, it brings to light the printed matter doctrine’s otherwise difficult-to-perceive conceptual coherence and points the way to its otherwise absent statutory grounding. Second, the sign doctrine raises serious questions about the patentability of computer models under In re Bilski. Viewed from a semiotic perspective, the difficulty of obtaining patent protection for diagrams under the printed matter doctrine and the routine nature of patent protection for computer models under Bilski cannot be reconciled.

Accepted Paper Series