What Should Be Patentable? — A Proposal for Determining the Existence of Statutory Subject Matter Under 35 U.S.C. Section 101
Wake Forest Journal of Business and Intellectual Property Law, Vol. 13, p. 145, 2013
61 Pages Posted: 19 Jan 2013 Last revised: 4 Jun 2013
Date Written: June 2013
The question of what type of inventions should be protectable under patent law is a controversial issue that has received significant attention. Recent Supreme Court decisions reject a bright-line test in favor of a more open-ended approach to determining patent eligibility. Unfortunately, this provides limited guidance to lower courts and consequently the issue remains unsettled. Most inventions fit within the statutory requirements defining patent-eligible inventions. This article will examine the scope of patent-eligible subject matter defined by Patent Law section 101. It will look at judicial interpretation of the statute including exceptions judicially engrafted into the statute by the Supreme Court. Additionally, the competing policy concerns underlying the statute will be examined. It will be argued that this statute should be analyzed, interpreted, and applied consistently with the usual rules generally applied by courts. This requires understanding that underlying policies are often inconsistent or competing. Such policies must therefore be balanced in crafting an applicable rule. Any resulting rule will be imperfect because it will potentially be over- or under-inclusive. Additionally, it will have disproportionate effects on different industries. Nevertheless, the importance of a uniform and predictable rule outweighs these deficiencies. Rather than propose a single rule, several rules gleaned from Supreme Court decisions will be proposed in light of the fact that patents cover many different technologies and patent claims can be drafted in a multitude of ways. Violation of any of the proposed rules means the patent claim at issue is not patent-eligible subject matter.
Keywords: patent, patent-eligible, statutory subject matter, section 101, 35 USC section 101, abstract ideas, laws of nature, natural phenomena, Prometheus, myriad
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