Institutional Design for Innovation: A Radical Proposal for Addressing 101 Patent Eligible Subject Matter

56 Pages Posted: 5 Dec 2018

Date Written: November 13, 2018


The United States—the land of innovation—has an innovation problem. This problem is due in part to the erosion of effective and reliable patent rights. One of the primary causes of this erosion is patent eligible subject matter. The current chaos of subject matter eligibility arose through a series of Supreme Court cases decided in the early 2010s that created an unintelligible and unworkable test. Multiple parties, from academia, from the bar, from industry, and more have offered proposals to fix this doctrine. However, the various proposals are doomed to fail.

Instead of simply adding to the cacophony of ineffective reform proposals, this article advances a radical solution that calls for situating patent eligible subject matter inquiries with the institution best suited for the task and may enhance and incentivize innovation. Specifically, this article argues patent eligibility inquiries should not be undertaken by the Patent Office. Before a patent is issued, the question of patent eligibility should not be considered by the examiner or by the Patent Trial and Appeals Board (PTAB or Board). After a patent is issued, patent eligible subject matter should not be the basis for any post-grant review at the Patent Office. Instead, to the extent patent eligible subject matter is in question, these decisions must be taken to the courts. Making this change to vest the decision making power with the courts ensures that issue is before the best institution for the task, and should also incentivize courts to craft a workable, more certain test for patent eligible subject matter; strengthen patent rights; and ultimately enhance innovation.

Keywords: patent, statutory subject matter

Suggested Citation

Osenga, Kristen, Institutional Design for Innovation: A Radical Proposal for Addressing 101 Patent Eligible Subject Matter (November 13, 2018). American University Law Review, Forthcoming, Available at SSRN:

Kristen Osenga (Contact Author)

University of Richmond - School of Law ( email )

203 Richmond Way
Richmond, VA 23173
United States
804-289-8112 (Phone)

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