Applying Patent-Eligible Subject Matter Restrictions
27 Pages Posted: 16 Sep 2015 Last revised: 30 Nov 2016
Date Written: 2015
The US Supreme Court’s difficulty in promulgating a standard for patent-eligibility has not gone unnoticed in the academy. Hundreds of academic conferences, including this one, have been devoted to the topic. The goal of this Article is not to solve the seemingly intractable problem of patent-eligibility doctrine. The goal of this Article is rather more modest. Instead of normatively assessing patent-eligible subject matter doctrine, this Article seeks to identify which foundational theories of patent-eligible subject matter can most readily be applied by courts and the US Patent and Trademark Office via Section 101. In doing so, this Article categorizes the various innovation theories that scholars have applied to Section 101 and analyzes whether the resulting doctrines can be predictably applied by the institutions involved in patent law. Appreciating the applicability of patent-eligible subject matter theories can assist the Supreme Court in shaping doctrine that best achieves the policy goals underlying those theories.
Keywords: Federal Circuit, PTO, Patent Law, Patentable Subject Matter, 35 USC 101
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