Patent-Eligible Processes: An Audience Perspective

36 Pages Posted: 6 May 2015 Last revised: 19 Sep 2017

See all articles by Timothy R. Holbrook

Timothy R. Holbrook

Emory University

Mark D. Janis

Indiana University Maurer School of Law

Date Written: May 5, 2015

Abstract

Many of the problems with modern patent-eligibility analysis can be traced back to a fundamental philosophical divide between judges who treat eligibility as the primary tool for effectuating patent policy and those who take patent-eligibility as nothing more than a coarse filter to be invoked in rare cases. After several years in which the coarse filter approach seemed to have the upper hand, the eligibility-as-king approach now is firmly in ascendancy. This Article, resists that trend, exploring more centrist approaches to patent-eligibility, particularly in the context of process inventions. This Article first examines the practice of undertaking an eligibility analysis with no antecedent claim construction; then concludes that this practice is problematic, drawing on the authors’ prior work concerning the design of patent law rules in view of the audience for those rules. This Article also assesses the unfortunate renaissance of the “inventive concept” inquiry, arguing that the Court’s new embrace of that inquiry is a mistake that permits judges to privilege eligibility to the virtual exclusion of all other patentability doctrines.

Keywords: patentable subject matter; eligible subject matter; patent; claim construction; processes; methods; obviousness; inventive concept; alice; cls bank; bilski; mayo; prometheus

Suggested Citation

Holbrook, Timothy Richard and Janis, Mark David, Patent-Eligible Processes: An Audience Perspective (May 5, 2015). Vanderbilt Journal of Entertainment & Technology Law, Vol. 17, p. 349, 2015; Indiana Legal Studies Research Paper No. 318; Emory Legal Studies Research Paper. Available at SSRN: https://ssrn.com/abstract=2602797

Timothy Richard Holbrook (Contact Author)

Emory University ( email )

1301 Clifton Road
Atlanta, GA 30322
United States
404-712-0353 (Phone)

Mark David Janis

Indiana University Maurer School of Law ( email )

211 S. Indiana Avenue
Bloomington, IN 47405
United States

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