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The Case for Limited Patentable Subject Matter

April 13, 2010

After Association for Molecular Pathology and ACLU v. USPTO and Myriad (S.D.N.Y. 2010) came down, I have started to seriously consider what my stance is on proper patentable subject matter. I have mostly been exposed to the view supporting broad patentable subject matter. However, I have started to see validity in the other side, supporting limited patentable subject matter. To help myself get my mind around the concepts, I figured I would argue both sides, and then see which side I like best. This is the first of three posts that will argue for and against broad patentable subject matter, and finally summarize and hopefully come up with an answer.

Patents on business methods, medical diagnostics and the like can, and do in many cases, claim mental steps of analysis and interpretation. This type of patent protection may lead to the offensive result of patenting people’s “thoughts.”

From a Constitutional policy standpoint, to promote the progress of science and the useful arts, it is important to have a strong, enforceable, and reasonable patent law. Allowing business method or medical diagnostic patents fails to do this. Not only do these patents allow patenting of abstract ideas and thought processes, they are unenforceable, and lead to a weaker, less respected patent law.

Supporters of broad patentable subject matter note that patents on thought processes are unenforceable and do not interfere with anything. It is impossible to prove that someone actually thought through the steps claimed in the patent, and therefore infringement could not be established.

This unenforceability argument is weakened by two points:

  1. The patenting of the thought processes in the first place will deter those who abide by the law and do not want to infringe a patent; and
  2. Allowing mental step patents, even if they are unenforceable, encourages people to break the law – obviously an undesirable legal structure.

People generally obey the laws, and since patent infringement is against the law, it follows that most people will not infringe patents. Therefore, while an abstract business method may not be enforceable, the majority of people likely will not challenge it, regardless of enforceability.

Moreover, legal structure should not be so disconnected with social realities that law breaking is the acceptable or encouraged. Yet this is exactly what proponents for broad patentable subject matter suggest . Allowing patents that are unenforceable is an unfavorable outcome because it weakens the law, and the public’s respect for the law, by encouraging people to ignore and infringe certain patents.

Larry Lessig makes a similar argument regarding copyright law when arguing that copyright law stifles user-generated content, such as what is so often seen on YouTube: Link (See Last Paragraph); Here is the video of the presentation.

Therefore, to further Constitutional policy and encourage a strong and respected patent law, patentable subject matter should not include business methods, medical diagnostics and other patents covering mental processes.

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5 Comments leave one →
  1. Geza permalink
    April 22, 2010 11:58 am

    Nice exercise to argue both sides of the issue.

    I think one important argument for limited subject matter is that patents should be limited to those subjects where they actually do further progress and innovation.

    There is a strong case against any such usefulness, e.g., in the case of software patents: the case can be made empirically via economic studies (e.g. Bessen and Meurer) or from the observation that software innvovation was at its peak wwhen there were no software patents, from the fact that programmers do not read patents (since they do not disclose anything useful, in particular no source code!)
    Moreover, Congress wisely chose to protect writers and composers by Copyright, not patents, and software writers have also always been (rightfully!) protected in such a fashion. As writing and composing would be unacceptably hindered by patents on stories and themes, thus is programming hindered by patents on algorithms (and a patent on “a general or specific purpose computer on which I have loaded a program that performs the following algorithm” is for all practical purposes indistinguishable from a patent on the algorithm as such).

    • April 23, 2010 12:20 am

      I have heard both of these positions before, and I think they certainly have some merit, however:

      In response to the “limiting patents to where they are useful” argument, I do not think that the law can respond fast enough to work this way. It takes a long time to figure out what is and is not useful patent subject matter. On the other hand, venture investment can adapt quickly. Why not allow patents for all innovation and let economy dictate what patents are furthering progress, and let the useless patents die on the vine?

      As far as copyright protection, I think that it is too thin to adequately protect software. In programming there are always many different ways to achieve the same result. All a programmer needs to do to get around copyright protection on software is write his own code to make the same program. It could even be decompiled and modified (not ethical, but possible).

      That said, it is definitely important for those at the PTO to be diligent in preventing overly broad software patents, but that is where 102, 103 and 112 come into play.

      Thanks for the comment!

      • Geza permalink
        April 23, 2010 7:40 pm

        thanks for your reply.

        Why not allow patents for all innovation and let economy dictate what patents are furthering progress, and let the useless patents die on the vine?

        The problem as I see it are not so much “useless” as harmful patents. Both “granting” and “not granting” is a state intervention in the market. Since patents are a much stronger grant than copyright, they have to be handed out carefully in my opinion. As monopoly rights patents interfere with the free market and with the best allocation of resources. Moreover, they take away freedom from all of us to give exclusive rights to a few. Again, a compelling reason mus exist to do so.

        Arguably the most innovative and successful human enterprise is science and it works very well in a patent-free setting -based on human curiosity, the thrill of competition and teh rewards (money and merit) that are available even without patents.

        Hence my stance that patents should be limited to fields of technology where the unregulated market (i.e. the market without monopoly grants from the PTO) does not produce enough innovation.

        As far as copyright protection, I think that it is too thin to adequately protect software. In programming there are always many different ways to achieve the same result. All a programmer needs to do to get around copyright protection on software is write his own code to make the same program.

        while it may be easy to re-implement a simple procedure without violating copyright, it is much harder to make an equivalent copy of a large piece of software. Even after decades MS Office and OpenOffice are not equivalent enough for the free to outcompete the non-free.
        Small software ideas that can quickly be reverse-engineered may not require the big investments that would justify the granting of patents.

        regards
        Geza

  2. April 26, 2010 7:25 am

    Hey, great blog…I haven’t figured out how to add your site in my rss reader but I will soon 🙂

Trackbacks

  1. The Finale: My Position on Patentable Subject Matter « 1.8.8. The IP Policy Blog

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