Academic journal article Santa Clara High Technology Law Journal

Two Models of Unpatentable Subject Matter

Academic journal article Santa Clara High Technology Law Journal

Two Models of Unpatentable Subject Matter

Article excerpt

TABLE OF CONTENTS  INTRODUCTION I.   CONDITIONS FOR RECEIVING A PATENT      A. Section 101 and Its Exceptions      B. The Other "Doors" to Patentability II.  DISTINGUISHING NATURAL LAWS, NATURAL      PHENOMENA, AND ABSTRACT IDEAS III. PATENTABLE INVENTIONS AND LAWS OF NATURE      A. The Early Cases      B. Funk Bros      C. "Invention" and Obviousness      D. The Software Trilogy      E. The Recent Cases IV.  PATENTABLE INVENTIONS AND PHENOMENA OF      NATURE      A. The Early Cases      B. Nature Processed and Purified      C. Myriad V.   PATENTABLE INVENTIONS AND AB STRACT IDEAS VI.  THE APPEAL OF SYNTHESIS AND THE SHORTCOMINGS OF      THE PENUMBRAL MODEL CONCLUSION 

INTRODUCTION

The controversy that surrounds the doctrine of patentable subject matter, which a series of Supreme Court decisions failed to resolve, is the product of, in part, two competing and irreconcilable models of unpatentable subject matter; the penumbral model and the binary model.

Courts interpreting [section] 101 of the Patent Act have held that one cannot patent an invention if it constitutes a natural law, a natural phenomenon, or an abstract idea. some decisions further suggest that patent-ineligible subject matter casts a shadow larger than itself--in other words, that for each natural law, natural phenomenon, or abstract idea, one can identify a class of inventions that cannot be patented because they are too similar to their ineligible counterparts. (1) To escape this shadow, an inventor must add something substantial to differentiate the invention--an "inventive concept" in the form of significant physical differences, unconventional steps, or meaningful limitations. (2) Such distinctions, like those that determine obviousness of a claimed invention in comparison to the prior art, are a matter of degree.

Other decisions hold that any process, apparatus, or composition of matter that usefully applies the latent potential of nature or an abstract idea is an invention eligible for patenting. (3) When one focuses on potential and application, patentable subject matter is no longer a matter of shadows and degrees; it is a binary either/or proposition. As expressed in one opinion of the Federal Circuit Court of Appeals, "either the subject matter falls within Section 101 or it does not." (4)

In their search for a consistent and intelligible approach to unpatentable subject matter, courts have treated principles of nature, natural phenomena, and abstract ideas as similar building blocks of technological advancement. With that goal in mind, the penumbral model of unpatentable subject matter has recently been advanced as the model to apply in cases involving natural laws (e.g., the correlation between certain metabolite levels and an effective dosage of medicine), (5) natural phenomena (e.g., the DNA found in human genes), (6) and abstract ideas (e.g., the precaution of putting assets in the hands of a trusted intermediary before completing a trade). (7) Yet there are problems in applying the same penumbral model of unpatentable subject matter to each of the three off-limits categories--asking whether, in each case, the claimed invention adds significantly more.

First, this approach fails to acknowledge, much less resolve, the long-standing tension between the binary model of unpatentable subject matter, based solely on the introduction of new utility through human effort, and the penumbral model, which demands an additional measure of ingenuity. Second, although they regularly deny it, courts applying the penumbral model have introduced obviousness as a consideration in the analysis of patentable subject matter. This contradicts the fundamental structure of the Patent Act, in which obviousness matters only in relation to human-made prior art. Finally, when applied to natural laws, the penumbral model of unpatentable subject matter treats nature, like human-made prior art, as a baseline or starting point for invention. …

Search by... Author
Show... All Results Primary Sources Peer-reviewed

Oops!

An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.