TABLE OF CONTENTS
I. CHALLENGES IN DEFINING THE LIMITS OF PATENTABILITY
II. THE HISTORY OF FAILED PATENTABILITY RULES
A. The Unpatentability of Changes in Form and Proportions
B. The Unpatentability of Plants and Animals
C. The Unpatentability of New Uses
D. The Unpatentability of Methods of Medical Treatment
III. THE MODEST SUCCESS OF PATENTABILITY STANDARDS
A. The Unpatentability of Natural Principles and Phenomena
B. The Unpatentability of Abstract Ideas
IV. THE FATE OF THE RULE FROM THE BILSKI EN BANC
CONCLUSION: THE FAILURE OF RULES AND THE VALUE OF FAILURE
Courts and legislatures face a fundamental dilemma in constructing the law of patents. Patents convey property rights, and a substantial degree of certainty is usually thought to be helpful, or even essential to well functioning property rights. (1) Yet patents also cover invention, and human inventiveness by its nature unsettles certainty, changes the status quo, and breaks through preexisting assumptions.
In legal doctrine, the conflict between certainty and creativity plays out within the familiar jurisprudential debate between rules and standards. (2) Clear rules can provide the certainty that encourages investment both in obtaining and developing the rights, but standards can provide the flexibility to accommodate the new and unpredictable wonders of human ingenuity. The stakes of this traditional debate are highest for the doctrine of patentable subject matter, which governs the fundamental boundaries of the patent law's domain.
The latest controversy in the field of patentable subject matter provides a perfect example. In the en banc decision In re Bilski, (3) rendered in the fall of 2008, the United States Court of Appeals for the Federal Circuit overruled its prior doctrinal test and established a new rule--not a flexible standard--for determining whether a process is patentable subject matter: "[A] claimed process is surely patent-eligible under [section] 101," the Bilski majority confidently announced, "if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." (4)
The Federal Circuit identified that its overarching goal was to "clarify the standards applicable in determining whether a claimed method constitutes a statutory 'process' under [section] 101." (5) Because clarification was the goal, it is unsurprising that the Federal Circuit attempted to articulate a definite rule to govern this area of law, and the court plainly understood that it was choosing to attempt a more rule-based approach in this area of law. The court repeatedly referred to its new doctrine as "the machine-or-transformation test," (6) emphasized that its new test "is the only applicable test and must be applied ... when evaluating the patent-eligibility of process claims," (7) and warned that "[n]either the PTO nor the courts may pay short shrift to the machine-or-transformation test by using purported equivalents or shortcuts such as a 'technological arts' requirement." (8) Nothing in the en banc opinion suggested that the court envisioned that future three-judge panels or Patent and Trademark Office (PTO) examiners would have to weigh and balance a variety of competing policy considerations to apply the court's new machine-or-transformation test.
In announcing its new test, the Bilski court expressly disavowed the analysis that had been set forth in its 1994 en banc decision In re Alappat, (9) and had been applied in its 1998 and 1999 panel decisions, State Street Bank & Trust Co. v. Signature Financial Group (10) and AT& T Corp. v. Excel Communications, Inc. (11) That line of cases had, in turn, disavowed an even earlier test, known as the Freeman-Walter-Abele test, which derived from three cases decided between 1978 and 1982. (12) Thus, the Federal Circuit and its predecessor court have changed the rules governing patentable subject matter no less than three times in thirty years. …