Neurobiology and Patenting Thought
Andrew W. Torrance
University of Kansas - School of Law
May 21, 2009
Gruter Institute Squaw Valley Conference 2009: Law, Behavior & the Brain
During the middle of the 20th Century the courts and the United States Patent and Trademark Office developed a legal doctrine governing the patentability of claims involving “mental steps.” This “Mental Steps Doctrine” rendered unpatentable any patent claim to a process made up of human thought. In a famous statement of this rule, the court in In re Abrams, 188 F.2d 165 (C.C.P.A. 1951), declared that “[i]t is self-evident that thought is not patentable.” Though the Mental Steps Doctrine lost much of its vitality over subsequent years, it now appears to be reemerging in the jurisprudence of both the Court of Appeals for the Federal Circuit (“CAFC”) and the United States Supreme Court. Though the appeal in LabCorp v. Metabolite (U.S. 2006) was ultimately dismissed as improvidently granted, the vigorous dissent to this dismissal argued that the claims at issue (that is, methods of correlating the concentration of a chemical to a human patient’s health) should have been found invalid as unstatutory subject matter for involving human thought. In the wake of LabCorp v. Metabolite, the CAFC’s decisions in In re Cominsky (CAFC 2009) and In re Bilski have revived the Mental Steps Doctrine by reaffirming the unpatentability of claims involving human thought. Many rationales have been offered to justify why thoughts should be unpatentable subject matter, some focusing on possible abstract violations of the First Amendment and others suggesting that “higher” forms of thought, such as mathematical reasoning, should be less patentable than more reflexive forms of thought. Neurobiology offers a powerful lens through which to view such rationales, and may suggest a different approach to the patentability of thought. Recent insights from neurobiology suggest that there exist at least two rather different categories of “thought”. Cerebral cortex-like thoughts may tend to possess a significant volitional character, and may therefore be avoided with conscious effort, whereas cerebellum-like thoughts may tend to be significantly non-volitional in nature. Although some might privilege cerebral cortex-like thoughts over cerebellum-like thoughts because the former often involve “higher” intellectual content than do the former, neurobiology might suggest the opposite result. Since cerebellum-like thoughts are less likely to be under volitional control, infringement of patent claims involving such thoughts may tend to be involuntary; even specific knowledge of a patent claim would tend to be insufficient to discourage infringement, because infringement would tend to be non-volitional. Involuntary patent infringement would seem tantamount to a sort of “patent servitude”. By contrast, it is much more likely that cerebral cortex-like thoughts could be avoided with care and effort, thus allowing the possibility that specific knowledge of a patent claim could discourage, and allow avoidance of, infringement, because infringement would tend to be volitional. Neurobiology can provide useful insight into how patent law might inform a modern, and more rational, Mental Steps Doctrine.
working papers series
Date posted: May 15, 2009
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