The Knowledge/Embodiment Dichotomy
72 Pages Posted: 26 Apr 2014
Date Written: April 24, 2014
Despite the renewed interest in limits on patent eligible subject matter during the last decade, patent theory and doctrine have to date failed to recognize one of the most fundamental limits on what can be patented: the “knowledge/embodiment dichotomy.” The dichotomy marks a categorical distinction between two types of technological progress, namely patent ineligible advances in knowledge and patent eligible advances in embodiments.
The knowledge/embodiment dichotomy does not exist de dicto in contemporary patent opinions, treatises, or scholarship. However, it does already exist in a rough form as a de facto limit on the reach of patent protection. That is, courts’ and commentators’ failure to acknowledge the dichotomy has been a conceptual failure, not a failure to curb the reach of patent rights. Contemporary patent law provides de facto enforcement of the dichotomy without de dicto recognition through two distinct mechanisms. First, prohibitions on the patenting of mental processes and printed matter provide indirect, fragmentary enforcement of the dichotomy. Second, in the gaps between these fragments, the courts and the PTO improvise. They take doctrines aimed at enforcing unrelated limits on the patent regime and twist them beyond conceptual coherence to fill the gaps. The Supreme Court’s recent opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc. on the patentability of “laws of nature” and the PTO’s distinction between functional and nonfunctional descriptive material in software-on-disk claims exemplify these doctrinal contortions.
Keywords: patent, copyright, patent eligibility
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