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The Case for Broad Patentable Subject Matter

April 18, 2010

Broad patentable subject matter is necessary for the most comprehensive patent protection. Allowing broad patentable subject matter allows innovation to occur where it is most helpful. On the other hand, preventing a whole class of innovation from receiving patent protection unduly limits innovation. For inventions that claim mental steps or other abstract steps, their patents will be unenforceable, but the innovation will be disclosed, thus furthering innovation.

Both the Constitution, and patent law define patentable subject matter very broadly. The Constitution states that intellectual property law should “promote progress in science and the useful arts.” Likewise, so does 35 U.S.C. §101 in defining patentable subject matter. The intent of the patent law, as noted in the Committee Reports, is to “include anything under the sun that is made by man.” Therefore, limiting patentable subject matter is against both law and policy.

Patents on business method, medical diagnostic, software and the like, are important to further innovation. The patent encourages inventors to disclose their inventions, allowing others to build off their ideas. Without the incentive of patent protection, there is no incentive to disclose the invention. Many advances would be kept secret without patent protection resulting in limited public knowledge and decreased innovation.

Allowing broad patentable subject matter may result in some misguided patents claiming thought processes, or other abstract features. However, the patent claims for such a patent would be unenforceable because it is impossible to prove someone thought a certain way. Therefore, the patented innovation is published, and people do not need to worry about designing around it because they need not fear an infringement suit.

Some patents may seem to cover things that,  to the layperson, to not deserve patent protection, but this is based on a misunderstanding of what the patent covers. For example, many people would argue that the concept of patenting genes is preposterous.  What they fail to realize is that a patent on a gene is going to be very limited and narrow. This applies to all patents, because generally a patent on a thing is either limited to that thing or an aspect of it. The public aversion to something like a “gene patent” is based on the misunderstanding that the patent covers the gene in any situation. It is a shame when this type of misunderstanding of the law drives a policy shift to limit patentable subject matter.

Innovation always moves faster than law, so the law of patentable subject matter needs to be open and encompass as much innovation as possible. Currently, the law is structured this way, and allows new innovation without hindering unforeseen technology. The apparent trend in case-law of preventing whole fields of innovation from receiving patent protection is short-sighted and limits innovation in fields for inventions that deserve protection.

Both the Constitution and §101 intend to give patent coverage to a broad array of subject matter. True, some of the new patents may tiptoe the line into thought processes, however these patents are unenforceable. Therefore, the worst-case scenario of allowing broad patent subject matter is public disclosure of the invention, coupled with unenforceable patent protection. The public disclosure furthers innovation, and the patent protection allows new innovation to be developed for subject matter that is deserving of enforceable patent protection.

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11 Comments leave one →
  1. Dave permalink
    April 18, 2010 1:01 pm

    Why is the free market an insufficient incentive for innovation? Allowing James Watt to patent his steam engine arguably delayed the Industrial Revolution. But, soon after his patent expired, steam engine efficiency increased by a factor of five in a twenty five year period. These improvements were delayed by a patent enforced in courts and granted because Watt had friends in high places.

    • April 18, 2010 5:25 pm

      Interesting question. The free market is an insufficient incentive for innovation because if others can freely copy an invention, it will make more economic sense to copy instead of innovate. It takes money to research and develop innovation, and it would not make economic sense to spend that money if others could easily copy the innovation. The result is substantially reduced innovation.

      As far as the steam engine example, I would reply that while innovation may have been delayed for the term of the patent, the innovation was encouraged because of the patent system. Moreover, the public disclosure required for a patent likely made the efficiency increase possible.

  2. Jevon Louis permalink
    April 22, 2010 7:00 am

    You mentioned:

    “True, some of the new patents may tiptoe the line into thought processes, however these patents are unenforceable. Therefore, the worst-case scenario of allowing broad patent subject matter is public disclosure of the invention, coupled with unenforceable patent protection.”

    I respectfully disagree that that’s the “worst-case scenario”. The effect of a patent is not only demonstrated when enforcement action is undertaken. It can serve as a marketing tool as well. The term “marketing tool” is broad and encompasses using it to (1) create the perception that the invention it covers is unique and valuable, (2) to (rightly or wrongly) attract venture capital, and (3) to create an undeserved monopoly for the patentee since that monopoly can only be properly displaced with the undertaking of costly revocation procedures. Often, no one wants to undertake it unless there are good reasons (usually financial) to do so. (

    The diversion of venture capital is detrimental to society, from an economic point of view, because monetary resources are diverted away from more deserving patents in need of cash to be realized and exploited. As for the monopoly, the perceived exclusivity enjoyed may be sufficient to prevent market entrants or subject them to unnecessary licensing costs.

    I think what you have pointed out is but one scenario that could happen, but by the existence of that scenario alone, other unintended effects take place. My personal view is that while patentable subject matter ought to be kept broad, exclusions such as those that the EPC has could keep out such borderline patents as well, and if not better than allowing their lack of enforceability to limit their impact.

    Good post all the same.

    • April 23, 2010 12:34 am

      Jevon,

      Good point, I had not thought of that aspect, there are so many consequences of patent policy, which is what makes the topic so interesting.

      It seems like you assume that venture investors are not savvy enough to evaluate the enforceability or strength of a patent? I cannot speak either way since I do not have any experience in that area, but my guess is that they would at least try to evaluate the patents of their potential investments.

  3. April 22, 2010 7:50 pm

    Without the promise of patent protection people routinely kept inventions secret as long as possible. In fact, guilds carefully guarded those secrets and progress was very slow.

    Ronald J. Riley,

    Speaking only on my own behalf.
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.PatentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (810) 597-0194 – (202) 318-1595 – 9 am to 8 pm EST.

    • April 23, 2010 12:35 am

      Ronald,

      I agree, disclosure is a key element that I think many people who are unfamiliar with patents do not appreciate. I think this lack of appreciation leads to a misunderstanding of patents and what should be patentable.

  4. George Morgan permalink
    April 24, 2010 2:56 pm

    Ronald,

    While it is true that inventors tended to keep their inventions secret prior to the advent of patents, it is much more difficult today to maintain a trade secret today. Most inventions are easily copyable today.

    George D. Morgan
    http://www.patentaz.com

  5. B.E. permalink
    April 26, 2010 5:48 pm

    The public aversion to something like a “gene patent” is based on the misunderstanding that the patent covers the gene in any situation. It is a shame when this type of misunderstanding of the law drives a policy shift to limit patentable subject matter.

    Hi Dave, saw the link from Patently-O, good piece. One question though–what if the gene is only practically useful in one situation, e.g., the BRCA genes at suit in Myriad? The human genes that get attention are AFAIK disease-linked sequence polymorphisms because those are the ones that will generate revenue and benefit the sick through early testing and identification, right? If you can patent the test for this cDNA, isn’t the only way to work around that patent to develop an entirely new way of isolating cDNA? Doesn’t that represent a lot of waste fighting over the same eventual prize?

    Thanks,

  6. May 1, 2010 1:11 pm

    Found this very helpful, many thanks for posting this.

  7. piencyTep permalink
    May 22, 2010 11:20 pm

    Just want to say what a great blog you got here!
    I’ve been around for quite a lot of time, but finally decided to show my appreciation of your work!

    Thumbs up, and keep it going!

    Cheers
    Christian, iwspo.net

Trackbacks

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

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