Method Patent Exceptionalism
62 Pages Posted: 9 Apr 2016 Last revised: 23 Mar 2017
Date Written: April 7, 2016
Inventive methods and processes have long received hostile treatment by the patent system. Courts have long been skeptical of these claims because of the potential for overbreadth of the patent, particularly if the method is delineated in functional terms. This categorical skepticism, however, fails to consider the technological specificity of such concerns. For example, the pharmaceutical industry views method claims, particularly methods of use and treatment, as weaker, second-tier forms of protection. While important, patents on the chemical compound itself offers greater downstream protection over all uses of the compound.
Nevertheless, process claims have received differential treatment in patent law. Congress has adopted process-specific provisions. Notwithstanding that Congress has often legislated specific provisions for process claims, the Federal Circuit has gone further, affording patented processes exceptional – and usually detrimental – treatment, even though the patent statute is neutral as to the nature of the invention. Moreover, the exceptional treatment creates inconsistencies in the law. For example, the Federal Circuit has stated that it would not be possible to infringe a patent on a method by selling or offering to sell the invention, even though the law is clear that method claims are subject to patent exhaustion (the “first sale” doctrine) and to the on-sale bar. Similar exceptional treatments arises for extraterritorial protection for U.S. patents and the manner courts handle “divided infringement” scenarios, where more than one party is involved in the act of infringement. Ironically, the one area where treating methods differently would be most appropriate – assessing patent eligible subject matter under 35 U.S.C. § 101 – is the one place where the Supreme Court has conflated patented methods with other types of inventions.
This Article offers the first comprehensive exploration of method patent exceptionalism and posits ways to eliminate the differential treatment of method claims to put them on equal footing with other types of inventions.
Keywords: patent, method, process, exhaustion, quanta, first sale, territoriality, extraterritoriality, divided infringement, marking, patent marking, first inventor defense, surgical proedure, medical procedure, product of patented process, making invention, selling invention, offering to sell invention
JEL Classification: O34, O31, O38
Suggested Citation: Suggested Citation