The Rule Against Abstract Claims: History and Principles
Canadian Intellectual Property Review (C.I.P.R.), Vol. 26, No. 2, pp. 205-229, 2011
28 Pages Posted: 13 Mar 2011 Last revised: 3 Jan 2015
Date Written: February 4, 2011
There are two contrasting views of the rule that abstract ideas cannot be patented. On one view, the rule prohibits patents for invention where the inventive concept lies solely in an idea, rather than its application. On the alternative view, the rule prohibits only claims to an abstract idea as such; a claim to an application of an idea is acceptable, even if the inventive concept lies solely in the idea. This paper shows that the second interpretation has been clearly accepted from the earliest cases of the industrial revolution in which the rule was established, and the first interpretation has been expressly rejected. The paper then examines the rationale for the rule, which is less clear. The paper argues that the first interpretation of the rule is unacceptable from a policy perspective, as it is inconsistent with the fundamental nature of inventions as information. On the other hand, there are three plausible policy justifications for the second interpretation: the requirement of present benefit; the property principle, that requires that a potential infringer can determine ex ante whether his or her course of action will infringe; and the evidentiary principle, that infringement of the invention must be susceptible to being reliably proven. These rationales are generally consistent and the case law to date does not allow one to be preferred over the others. None of them supports a requirement of physicality in the invention as claimed.
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