The Central Claiming Renaissance

78 Pages Posted: 16 May 2017 Last revised: 7 May 2018

Andres Sawicki

University of Miami - School of Law

Date Written: May 15, 2017

Abstract

The Supreme Court has recently reinvigorated the law of patentable subject matter. But beneath the headlines proclaiming the return of limits to patent eligibility, a more profound shift has taken place: central claiming is reborn.

The Court’s eligibility cases are significant outliers compared to today’s run-of-the-mill patent law because claim language plays little role in their analyses. In our modern peripheral claiming system, the claim language is the near-exclusive guide to the patent’s boundaries. But in its earliest days, our patent system pursued a central claiming approach, in which the inventor’s actual work determined the patent’s scope. The Court’s eligibility cases focus on the inventor’s actual contribution to the field, precisely as a central claiming inquiry would. And they can be better understood once this return to central claiming is revealed.

Indeed, the shift to central claiming points the way toward a principled approach to eligibility. The eligibility requirement aims to prevent patents from covering certain kinds of prohibited subject matter: laws of nature, natural phenomena, and abstract ideas. But every invention, at some level of abstraction, applies ineligible subject matter. In a peripheral claiming system, this levels-of-abstraction problem could lead courts to simply deem all claims eligible (as occurred for nearly thirty years) or all claims ineligible (as some fear will happen today). Central claiming offers a solution by focusing on what the inventor added to the storehouse of knowledge. It is that contribution, rather than some abstraction from the claim language, that guides the eligibility analysis.

Keywords: patent, intellectual property, patent eligibility, patentable subject matter, central claiming, claiming methodology, Supreme Court

Suggested Citation

Sawicki, Andres, The Central Claiming Renaissance (May 15, 2017). 103 Cornell Law Review 645 (2018); University of Miami Legal Studies Research Paper No. 17-19. Available at SSRN: https://ssrn.com/abstract=2968650

Andres Sawicki (Contact Author)

University of Miami - School of Law ( email )

P.O. Box 248087
Coral Gables, FL 33146
United States

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