Rulemaking § 101

53 Pages Posted: 4 Feb 2020 Last revised: 31 Jul 2020

Date Written: May 31, 2020


The doctrine of subject-matter eligibility, as developed from 35 U.S.C. § 101, ensures
that no one can stifle innovation by gaining a monopoly over an abstract idea, natural phenomenon, or law of nature. By excluding abstract ideas and laws of nature from patent protection, the doctrine ensures that no one can stifle innovation by gaining a monopoly over something as fundamental as the law of gravity. But recent decisions by the Supreme Court and the Federal Circuit have muddied the distinction between patentable and unpatentable subject matter. The resulting doctrinal confusion around subject-matter eligibility has prompted innovators to warn of serious consequences to investment and also spurred a notoriously ossified Congress to consider bipartisan reforms.

Enter the United States Patent and Trademark Office (USPTO). Although this office lacks the formal authority to promulgate substantive rules on subject-matter eligibility, it has nonetheless broadened its use of guidance documents in that area as a means of addressing this crisis. This Note chronicles the USPTO’s use of these guidance documents across time, as well as how federal courts and the Patent Trial and Appeal Board have come to rely on them. It argues that these guidance documents, for all their regulatory utility, closely resemble legislative rules. Looking ahead, this Note encourages Congress to grant the USPTO rulemaking authority over patentability. Until it does so, the USPTO’s recent guidance threatens to push the boundaries of its current authority and run afoul of the Administrative Procedure Act.

Keywords: administrative law, rulemaking, patent office, subject matter eligibility, patentability

JEL Classification: K23,O3

Suggested Citation

Costello, Brendan, Rulemaking § 101 (May 31, 2020). 129 Yale L.J. 2178 (2020), Available at SSRN:

Do you have a job opening that you would like to promote on SSRN?

Paper statistics

Abstract Views
PlumX Metrics