Expressive Eligibility

36 Pages Posted: 4 Nov 2015 Last revised: 7 Jun 2016

See all articles by Timothy R. Holbrook

Timothy R. Holbrook

Emory University

Mark D. Janis

Indiana University Maurer School of Law

Date Written: November 2, 2015


What is the ultimate objective of the patent eligibility inquiry? The recent eligibility case law — a frenzied outpouring of opinions from many esteemed judges — has revealed little while mystifying much. Scholars haven’t fared much better, although it isn’t for lack of trying. Our scholarly colleagues have offered a multitude of intriguing new perspectives on the analysis — drawing on history, the philosophy of science, semiotics, institutional choice, and so on. But we continue to wonder exactly what the eligibility inquiry is for.

In addressing that question here, we’re following a familiar methodological tradition: we propose to reimagine eligibility from a new perspective, that of expressive theories of law. Our central claim is that eligibility rules can be understood as performing expressive functions that are at least as weighty, if not more so, than the traditional gatekeeping function. We argue that it’s helpful to identify those expressive functions for three reasons: (1) doing so helps explain some aspects of eligibility doctrine that otherwise appear incoherent; (2) doing so brings to the fore some new ideas about the objectives of the eligibility inquiry that link to eligibility’s expressive functions; and (3) doing so may enable courts to design eligibility rules that facilitate the development of new behavioral norms in the patent community.

Keywords: Alice, Subject Matter Eligibility, Patentable Subject Matter, Expressive Theories, Expressive, Expressivism, Bilski, Myriad, Prometheus, Mayo, Section 101

Suggested Citation

Holbrook, Timothy Richard and Janis, Mark David, Expressive Eligibility (November 2, 2015). UC Irvine Law Review, 2016, Forthcoming; Indiana Legal Studies Research Paper No. 333; Emory Legal Studies Research Paper No. 15-372. Available at SSRN:

Timothy Richard Holbrook

Emory University ( email )

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

Mark David Janis (Contact Author)

Indiana University Maurer School of Law ( email )

211 S. Indiana Avenue
Bloomington, IN 47405
United States

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