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Ants, Elephant Guns, and Statutory Subject Matter

40 Pages Posted: 13 Jan 2007 Last revised: 14 May 2014

Kristen Jakobsen Osenga

University of Richmond - School of Law

Date Written: January 1, 2007


The U.S. Patent and Trademark Office has been rejecting an increasing number of patent applications in the area of computer-related arts for lack of statutory subject matter under 35 U.S.C. ¿ 101. Despite the broad definitions of patentable subject matter provided by the Constitution, Patent Act, and Supreme Court, the examining corps of the Patent Office has at various times in the past grafted additional requirements onto the ¿ 101 determination, including the mental steps inquiry, the machine implementation requirement, the tangible result requirement, and most recently the requirement that the invention be within the technological arts. In an effort to clarify the official Patent Office position on the issue of statutory subject matter in the computer-related arts, an expanded panel of the Board of Patent Appeals and Interferences recently quashed the notion of a separate technological arts inquiry, and the Patent Office subsequently issued interim Guidelines for examination of patent applications for patentable subject matter, paying particular attention to computer-related inventions.

The issue is not as complex as the Patent Office's activity suggests. Instead, this paper will demonstrate that the Patent Office is trying to kill an ant with an elephant gun. I will first explain why the question of patentable subject matter for computer-related inventions should be viewed as an ant, or perhaps an anthill. Second, I will explain why the Patent Office's examination Guidelines approach the problem of software patents with a rather unnecessary elephant gun. The examining corps, and even some commentators, often use ¿ 101 rejections as a way to avoid tackling other policy or practical issues that should be handled through other means. A more interesting and appropriate way to look at these subject matter rejections is as proxies for inquiries that should more appropriately be made under other statutory patentability requirements. Although the Guidelines have explicitly removed the various tests added by the examining corps from the examination analysis, there still remain unnecessary layers of inquiry bound to lead to unsupported rejections. By firing these tests at statutory subject matter, the Patent Office is truly firing an elephant gun to kill an ant. The only way to protect computer-related inventions is to disarm the Patent Office and remove any computer-related invention-specific inquiry from the determination of patentable subject matter.

Suggested Citation

Osenga, Kristen Jakobsen, Ants, Elephant Guns, and Statutory Subject Matter (January 1, 2007). Arizona State Law Journal, Vol. 39, 2007. Available at SSRN: or

Kristen Osenga (Contact Author)

University of Richmond - School of Law ( email )

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

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