A Burkean Perspective on Patent Eligibility

50 Pages Posted: 15 Dec 2006

See all articles by Thomas F. Cotter

Thomas F. Cotter

University of Minnesota Law School

Date Written: 2006


Developments in patent law over the past generation, as exemplified by the Patent Board of Appeals and Interferences' recent decision in Ex parte Lundgren, have all but done away with several venerable principles relating to patent eligibility - among them rules that all patentable inventions must pertain to the technological arts, that they may not read on mental steps, and that patentable processes must effect a physical transformation - in favor of an approach that asks only whether an invention has practical utility and is predictable in its effects. As a result, patentable subject matter now includes both the technological and the liberal arts; patent claims may read on steps that are capable of being performed mentally; and patentable processes need not effect any physical transformation of matter or energy external to the human actor. Debate over the wisdom of this expansion of patentable subject matter often focuses on the patentability of computer-related art, but also arises in cases such as Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., which involved a diagnostic process. Although the Supreme Court raised hopes, when it decided to grant review in Metabolite, that it would issue a definitive ruling either confirming or rejecting the modern trend, those hopes were dashed this past June when the Court dismissed the writ of certiorari as improvidently granted.

This essay questions whether the modern trend with respect to patentable subject matter - neat, orderly, rational, and logical though it may appear to some observers to be, in contrast to the more restrictive, even arbitrary, approach embodied in the technological arts, mental steps, and physical transformation doctrines - is really such a wise development after all. Taking a cue from the (admittedly non-patent related) writings of the Anglo-Irish statesmen and political theorist Edmund Burke, I argue that some aspects of the older approach to patentable subject matter may have embodied an underappreciated wisdom, to the extent the older doctrines prevented patent law from intruding upon both laws of nature and human liberty interests, including freedom of speech and personal autonomy. As times change, the law too must change, and it would be foolish to exclude computer and business-related art from the scope of patentable subject matter altogether; properly reformed and refined, however, the older doctrines still may play a useful role in preventing patent law from unduly extending its reach into every nook and cranny of human endeavor.

Keywords: Patents, Patentable Subject Matter

Suggested Citation

Cotter, Thomas F., A Burkean Perspective on Patent Eligibility (2006). Minnesota Legal Studies Research Paper No. 06-68, Available at SSRN: https://ssrn.com/abstract=951800 or http://dx.doi.org/10.2139/ssrn.951800

Thomas F. Cotter (Contact Author)

University of Minnesota Law School ( email )

229 19th Avenue South
Minneapolis, MN 55455
United States
612-624-7527 (Phone)

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