The Structure of the Law of Patentable Subject Matter
Intellectual Property Journal Vol. 23, No. 2, 2011
43 Pages Posted: 12 Mar 2011
Date Written: March 10, 2011
[enter Abstract Body]This article argues that the law of patentable subject-matter has been plagued by a failure to distinguish between two functionally distinct doctrines: the rule against abstract claims, which prohibits abstract claims in any field of endeavour, and field-specific exclusions, which prohibit patents in a particular field, regardless of whether the claim is abstract or applied. This distinction allows a reconciliation of the broad definition of patentable “art” in Shell Oil with the narrow definition of “composition of matter” in Harvard Mouse. Shell Oil is the definitive case on the rule against abstract claims, but its expansive approach to “invention” cannot be taken as the final word on field-specific exclusions. The broad definition in Shell Oil applies presumptively, but a restrictive interpretation of “invention” is permissible if there are sufficiently compelling policy reasons, as in Harvard Mouse. Applying this framework to Amazon.com, the article argues that while Phelan J was too dismissive of the view that policy considerations can inform the definition of “invention,” his decision was nonetheless fundamentally right for the right reasons. The evidence presented by the Commissioner that business method patents would impede innovation was far too weak to displace even a modest presumption in favour of the broad Shell Oil definition of “invention.” Further, the European framework adopted by the Commissioner was rightly rejected, as it conflates the rule against abstract claims and field-specific restrictions, and is consequently incoherent.
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