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Inglorious Patents

March 24, 2010

As a self-proclaimed IP policy blog, I feel that I am obligated to at least comment on the Federal Circuit’s ruling in In re Bilski regarding what can and cannot be patented (soon to be decided by the Supreme Court as Bilski v. Kappos). Patentable subject matter goes to the heart of Constitutional patent policy, thus the need to comment. A tremendous amount of discussion has been generated on the topic, so I will just put in my two cents, instead of analyzing it fully.

The Federal Circuit’s “Machine or Transformation” test is unsupported by the broad language defining patentable subject matter (35 U.S.C. §101). Moreover, from a policy standpoint the test unnecessarily limits subject matter that may be deserving of patent protection, and takes a narrow view of what Congress (and the Constitution) clearly intend to be a broadly applicable law.

It has long been established that abstract ideas (like E=mc^2) cannot be patented. All right, fine, it is tough to argue with that. However, it is not difficult to imagine a process that is not an abstract idea, but does not fit within the limiting test set forth by the Federal Circuit. This gap created by the overly limiting machine or transformation test is exactly why the patentable subject matter section is written so broadly: it is shortsighted to overly limit patentable subject matter.

In the past, the Supreme Court has taken a very broad stance on what subject matter is patentable based on the language of §101. To promote the progress of the useful arts, they should continue to do so and strike down the Federal Circuit’s test. We shall soon find out.

The Supreme Court, in Diamond v. Chakrabarty, broadly interpreted §101’s language of “manufacture” and “composition of matter”, it follows that “process” should be likewise broadly defined. The following quotation from that case summarizes my view on patentable subject matter, and fully embraces Constitutionally driven patent policy:

…In choosing such expansive terms as “manufacture” and “composition of matter,” modified by the comprehensive “any,” Congress plainly contemplated that the patent laws would be given wide scope.

The relevant legislative history also supports a broad construction. The Patent Act of 1793, authored by Thomas Jefferson, defined statutory subject matter as “any new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement [thereof].” Act of Feb. 21, 1793, § 1, 1 Stat. 319. The Act embodied Jefferson’s philosophy that “ingenuity should receive a liberal encouragement.” 5 Writings of Thomas Jefferson 75-76 (Washington ed. 1871). See Graham v. John Deere Co., 383 U.S. 1, 7-10, 86 S.Ct. 684, 688-690, 15 L.Ed.2d 545 (1966). Subsequent patent statutes in 1836, 1870, and 1874 employed this same broad language. In 1952, when the patent laws were recodified, Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” S.Rep.No.1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep.No.1923, 82d Cong., 2d Sess., 6 (1952).

Diamond v. Chakrabarty, 447 U.S. 303, 308-309 (1980).

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