68 Pages Posted: 21 Jan 2008 Last revised: 1 Jun 2014
Date Written: January 15, 2009
The currently confused and inconsistent jurisprudence of patentable subject matter can be clarified by implementing a single rule - that which is otherwise patentable under the Patent Act is patentable subject matter. In other words, if a discovery otherwise meets the requirements of patentabilty - namely category, utility, novelty, non-obviousness, and specification - then the discovery will be properly patentable without need to consider traditional non-statutory subject matter issues such as mathematical algorithms, products of nature, or natural phenomena.
The primary virtue of the proposed rule is that it provides a more rigorous and consistent doctrinal framework for determining patentability. A close analysis of the Supreme Court's historical subject matter opinions provides evidence in support of this virtue. In each case analyzed, the Court was actually concerned with the underlying patentability of the particular claim at issue - problems such as obviousness or insufficient disclosure - when its opinions announced broad subject matter statements.
The proposed rule may give pause to some who favor non-expansion and even contraction in patent protection; they might fear that the rule will expand the types of discoveries considered patentable. This article, however, demonstrates that abandoning subject matter restrictions in favor of rigorous application of patentability requirements will not necessarily lead to more bad patents, and in fact may reduce the number of discoveries that are currently considered patentable. Furthermore, the proposed rule does not foreclose Congressional restriction of patentable subject matter in a narrowly tailored and consistently applicable manner based on actual evidence of harm caused by particular types of patents. However, the judiciary should not limit the subject matter of all patents based on any single case at bar, and certainly not without concrete evidence of the supposed harm that such a patent may allegedly cause.
Keywords: patent, patent law, patentable subject matter, DNA, genes, Bilski, mental steps, products of nature, metabolite, comiskey, nuijten
JEL Classification: K11
Suggested Citation: Suggested Citation
Risch, Michael, Everything is Patentable (January 15, 2009). Tennessee Law Review, Vol. 75, p. 591, 2008. Available at SSRN: https://ssrn.com/abstract=1085871
By Mark Lemley