The Central Claiming Renaissance
76 Pages Posted: 16 May 2017
Date Written: May 15, 2017
The Supreme Court has recently reinvigorated the law of patentable subject matter. But beneath the eligibility headlines, a more profound shift has taken place: central claiming is reborn.
Although central claiming characterized our earliest patent system, peripheral claiming has been ascendant since the mid-1800s. The Court’s recent eligibility cases have been poorly understood because they treat claim language—the sine qua non of modern peripheral claiming—as an afterthought. This feature of the Court’s jurisprudence, however, makes better sense from a central claiming perspective. In a central claiming system, a patent’s scope is measured by reference to the contribution to the field embodied in the inventor’s work. And that is precisely what the Court’s eligibility cases do. Rather than demonstrating a disregard for core patent law principles, the Court’s opinions can accordingly be read as shifting away from peripheral and back to central claiming.
There are several payoffs from uncovering this return to central claiming. First, eligibility analyses in a peripheral claiming system are susceptible to a levels-of-abstraction problem because the claim language offers little guidance to the relationship between the invention and some underlying subject matter of interest; central claiming ameliorates this problem because the inventor’s contribution provides a more concrete foundation for assessing that relationship. Second, the central claiming insight reveals two distinct threads in the Court’s eligibility jurisprudence—one focusing on ineligible contributions and another on implausible contributions—with distinct (though uneasy) normative foundations. Finally, more robust use of central claiming might facilitate progress on other patent law problems. I show that it could (1) provide a better approach to the exhaustion trigger, (2) improve the law of divided infringement, and (3) rehabilitate the written description requirement. These examples illustrate the potential of the central claiming renaissance.
Keywords: patent, intellectual property, patent eligibility, patentable subject matter, central claiming, claiming methodology, Supreme Court
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