Propertizing Thought

Abstract

The United States Supreme Court unexpectedly accepted certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. to address whether a particular patent claim recites patentable subject matter under Section 101 of the Patent Act. However, after oral argument, the Court dismissed the writ as improvidently granted. The convoluted and truncated nature of the proceedings, combined with the notoriously murky status of contemporary Section 101 doctrine, have left the twin impressions that at least some members of the Court believe that something is wrong with patent claims like the Laboratory Corp. claim but that nobody has a good handle on what that something really is.

This article stakes out a new position, arguing that if the Laboratory Corp. claim is problematic, it is because the claim propertizes thought. Patent claims propertize thought when they recite acts of thinking about the inventive information that is revealed to the public in the disclosure of a patent. Thought-propertizing claims are conceptually problematic because they force us to confront the largely unquestioned coexistence of both claiming and disclosing regimes within patent law. Each regime vests an entitlement in a different party: claims create private rights to exclude for patentees while disclosures create privileges of access for the public. The two potentially conflicting regimes have to date persisted without significant controversy only because each has governed a distinct resource. A claimed and privatized inventive widget is intuitively something altogether different from the disclosed and freely available information that makes the widget inventive. In a thought-propertizing claim, however, the effects of the dual regimes of claiming and disclosing are focused on a single resource. Thought-propertizing claims purport to privatize acts of thinking about the very inventive information qua information traditionally made freely available to the public under the disclosure regime.

This article also explores two options for addressing the patentability of thought-propertizing claims. First, we can make a distinction between different types of thought-propertizing claims. We can attempt to identify the thought-propertizing claims that are the most subversive of the goals of the disclosure regime, and we can hold that only these claims recite unpatentable subject matter while allowing patents to issue on other claims that propertize thought. Second, we can conclude that the propertization of thought is axiomatically in conflict with the disclosure regime and categorically bar thought propertizing claims from patentable subject matter.

Keywords: Patents, Intellectual Property