Patent Ineligibility: Maintaining a Scientific Public Domain

30 Pages Posted: 21 Oct 2005

See all articles by Eileen M. Kane

Eileen M. Kane

The Pennsylvania State University (University Park) – Penn State Law

Abstract

Patent eligibility is a doctrine which often surfaces when new technologies or scientific imperatives create the possibility of patenting novel forms of subject matter. Its relative dormancy should not be mistaken for obsolescence. The possession of patentable subject matter is a prerequisite to obtaining patent protection, and eligibility is readily satisfied in most patenting efforts. However, at the margins of permissible patenting are the categories of laws of nature, natural phenomena, and abstract ideas, which the Supreme Court has declared to be ineligible for patent protection, and which must remain in the public domain.

The actual protection of laws of nature, natural phenomena and abstract ideas from private appropriation is met with considerable ambiguity in patent law practice, thereby reducing opportunities for doctrinal formation. The Article examines how issues relating to patentable subject matter are avoided or indirectly asserted by litigants, reducing the number of formal patentable subject matter conflicts. The precise definitions of laws of nature, natural phenomena, and abstract ideas are elusive, likely foreclosing otherwise credible assertions of invalidity for lack of patentable subject matter in litigation. In order to contribute to the ongoing project of defining the public domain in the life sciences, the Article looks to the definitions of laws of nature put forth from the legal system, comparing these definitions to those developed within the philosophy of science, in order to posit a dynamic conception of the laws of nature which is most relevant to knowledge production in modern scientific research. The Article further proposes that the judicially-maintained exclusions from patentable subject matter be expressly codified by Congress in a manner analogous to the statutory subject matter exclusions in copyright law.

The Article identifies several trends which suggest that patentable subject matter conflicts in patent law could emerge more, not less, frequently in the future. Further reductionism in the research programs of 21st century science (genomics, proteomics, and nanotechnology) suggests that patenting efforts at the margins of the unpatentable may be more likely. The increased involvement of a vigorous public interest sector in intellectual property law and the development of a formal opposition procedure in U.S. patent law will likely combine to generate further conflicts over patentable subject matter. Following the recent example of the Supreme Court's focus on the issue of patentable subject matter in Labcorp v. Metabolite, judicial vigilance may result in further instances where the issue of patentable subject matter is raised by the courts sua sponte. Although conflicts over patentable subject matter are infrequent, they are not trivial. The doctrine can authorize or prohibit the commodification of scientific subject matter. Furthermore, the prohibitions on patenting laws of nature, natural phenomena and abstract ideas can be interpreted broadly or narrowly, with consequences for the integrity of the patent system and the progress of the scientific enterprise. The goals of each, theoretically, are not in conflict.

Keywords: patent, public domain, patentable subject matter, DNA, biological sciences, law of nature

Suggested Citation

Kane, Eileen M., Patent Ineligibility: Maintaining a Scientific Public Domain. St. John's Law Review, Vol. 80, pp. 519, 2006, Available at SSRN: https://ssrn.com/abstract=833564

Eileen M. Kane (Contact Author)

The Pennsylvania State University (University Park) – Penn State Law ( email )

Lewis Katz Building
University Park, PA 16802
United States

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