Rules and Standards on the Forefront of Patentability

45 Pages Posted: 11 Nov 2009

See all articles by John F. Duffy

John F. Duffy

University of Virginia School of Law


Courts and legislatures face a fundamental dilemma in constructing the law of patents. Patents convey property rights, and a substantial degree of certainty is usually thought to be helpful, or even essential to well functioning property rights. Yet patents also cover invention, and human inventiveness by its nature unsettles certainty. In legal doctrine, the conflict between certainty and creativity plays out within the familiar debate between rules and standards. Clear rules can provide the certainty that encourages investment in rights, but standards can provide the flexibility to accommodate the new and unpredictable innovations. This Article examines attempts to limit patentable eligibility with relatively rigid rules, including the recent attempt by the Federal Circuit to establish such a rule in the In re Bilski case. In the long run, such rules always fail, and several historical examples of such failures are documented. Nevertheless, the short term certainty associated with rules may provide necessary, if temporary, safe harbors that allow property rights to thrive. And even in the long run, the repeated failures of patentable subject matter rules provide crucial insights into the meaning and process of invention in our society.

Keywords: patents, business method patents, rules, standards

JEL Classification: O31, K23, K2

Suggested Citation

Duffy, John Fitzgerald, Rules and Standards on the Forefront of Patentability. William & Mary Law Review, Vol. 51, No. 2, 2009, GWU Law School Public Law Research Paper No. 483, Available at SSRN:

John Fitzgerald Duffy (Contact Author)

University of Virginia School of Law ( email )

580 Massie Road
Charlottesville, VA 22903
United States
434-243-8544 (Phone)


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