Patent Owners versus the Supreme Court: Changing the Law Underlying Patent Eligible Subject Matter

By Winborn, Brett | Journal of Corporation Law, Fall 2018 | Go to article overview

Patent Owners versus the Supreme Court: Changing the Law Underlying Patent Eligible Subject Matter


Winborn, Brett, Journal of Corporation Law


I.Introduction

Intellectual property protections, including patents, drive innovation in our society. Patents represent a bargain between inventors and the public-the inventor will teach his invention in exchange for a period of exclusivity to make and sell that invention. Certain limitations are placed on what inventions are deserving of the period of exclusivity. The placement of the line separating the deserving and undeserving is a matter of debate with great economic consequences.

In attempting to draw the line in a logical location, Congress laid out criteria for what constitutes a patentable invention in 35 U.S.C. Section 101 (Section 101), and the courts have limited the broad language of that section with three judicial exceptions to patent eligible subject matter:1 laws of nature, physical phenomena, and abstract ideas.2

Case law, especially in the last seven years, has set some of the boundaries for those three judicial exceptions. Importantly, many methods of medical diagnosis fall within the exception of natural laws. This means that entities that discover a disease marker are not eligible for intellectual property protection, a determination with huge financial impacts. A similar result stems from the wide breadth of inventions considered to be physical phenomena or abstract ideas, especially impacting methods used by biotechnology and software companies.

This limitation on patent eligible subject matter has elicited several responses from interested parties. Notably, organizations dedicated to an efficient patent system (or rather, a system that favors inventors, in the eyes of critics) are pushing Congress to amend Section 101.

This Note argues that the American Bar Association's (ABA) proposal to change Section 101 takes the most prudent approach to addressing patent eligible subject matter. This Note will first describe the evolution of patent eligible subject matter and the Supreme Court's rationale underlying the judicial exceptions. It will then analyze and compare the proposals of three leading intellectual property organizations: the ABA Section of Intellectual Property, Intellectual Property Owners Association (IPO), and American Intellectual Property Law Association (AIPLA). Finally, this Note will argue why patent owners and applicants should support the ABA proposal.

II. Background

A. The Foundations of Patent Eligible Subject Matter

The United States patent system owes its origins to power granted to Congress by the Constitution to establish the system in order to encourage technological innovation.3 The Patent and Copyright Clause of the Constitution declares this purpose: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."4

Pursuant to its constitutional powers, Congress laid out the patent system in Title 35 of the United States Code. Patent eligible subject matter is addressed in Title 35, Section 101 of the United States Code: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."5 Judicial interpretation of Section 101 significantly impacts the patent system and those who rely upon it.6

The courts have added limitations to Section 101 regarding what constitutes patent eligible subject matter through a series of decisions. Section 101 allows patents for four categories of inventions: processes, machines, manufactures, and compositions of matter.7 However, the courts have added three judicial exceptions to what is patentable: natural phenomena, laws of nature, and abstract ideas.8 Four cases decided by the Supreme Court in the 20th century illustrate some of the bounds placed on patent eligible subject matter by the Court.9

B. The Supreme Court Builds its Framework for Patent Eligible Subject Matter

Although the doctrine of patent eligible subject matter originated long ago,10 its current shape began to take hold in the last 50 years. …

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