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My Position on Patentable Subject Matter

April 23, 2010

After considering the arguments for and against broad patentable subject matter, it is time for me conclude this three-part post by trying to put together a workable opinion on the matter.

In considering the implications on both sides, it seems that to best fulfill Constitutional objectives, patent protection should be allowed for a broad array of subject matter because of the importance of providing incentives to innovate in all fields. The Constitutional objective is reflected in the broad language of 35 U.S.C. §101, supported by its corresponding Congressional intent. I find the arguments to limit patentable subject matter to simply be unpersuasive.

It is true that public perception is important, and inventors should not be encouraged to disregard patents. However, law should reflect goals, and not flow with the whims of public opinion.

I think many commentators and supporters of limited patentable subject matter get caught up in what they think “seems right,” confusing what should be eligible for patent with what should be patentable. The question here is what should be eligible for patent. Many patents on genes, business methods, diagnostics and the like probably are unpatentable, but that does not mean they are not eligible for patent. As far as what should be eligible for patent, (i.e. patentable subject matter), the drafters of the 1952 Patent Act rightfully understood the importance of broad patentable subject matter. This understanding is represented in §101:

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.

Notably the statute states “any…” not: “some, if it seems like it should…” or even: “some unless it is a law of nature, physical phenomena, or abstract idea…” On its face §101 is obviously written broadly to include as much subject matter as possible, and this statutory language should not be disregarded.

In Diamond v. Chakrabarty the U.S. Supreme Court interpreted §101 to exclude patents on “laws of nature, physical phenomena, and abstract ideas.” Most would not argue that these do not deserve patent protection, but there may be some disagreement about why.

It seems to me that laws of nature and physical phenomena are not “new” as required by §101, and this is why they are excluded as subject matter. As for abstract ideas, these do not seem to be “useful” for the purposes of §101 (not that ideas aren’t useful, they just are not for patent purposes). Therefore, these limitations should apply more to the novelty requirements of §102 and enablement of §112, which elaborate on “new” and “useful,” respectively.

The exclusion of “abstract idea” from patentability may need to be reconsidered. Because so many once-tangible things are turning electronic, things such as money and books, it does not make sense to limit patented subject matter to tangible, concrete things. Therefore, the “abstract idea” definition must be loose enough to include these new, abstract innovations. Tying innovation to a machine, or requiring a “concrete, tangible and useful result” may exclude many potentially patent-worthy inventions from patentability.There is no need to muddy the waters by limiting subject matter with difficult tests and confusing interpretations. The limiting can and should be done with §102, §103 and §112.

My opinion is that if a claim is directed to a process, machine, manufacture, or composition of matter, it should be eligible patentable subject matter. That is not to say it should be patented, but it should be eligible for patent if it satisfies the other requirements of the Patent Act. Patent eligibility should be a threshold inquiry: “does the patent claim a process, machine, manufacture, or composition of matter?” If yes, move on.

The issue boils down to what best furthers the Constitutional goals, and what best conforms to the language of the statute. My position is that because of the unpredictability of innovation, and the need to provide incentives for inventors, patentable subject matter should be as broad as possible to further the Constitutional goals. This view also conforms to the language of §101, which is clearly written to be as broad as possible. There may be some unintended consequences resulting from this, as noted in my previous posts, but limiting patentable subject matter is not the appropriate solution. Instead, limiting patentable subject matter creates additional unintended consequences by limiting incentives to innovate and disclose in the fields that are excluded from patentability.

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10 Comments leave one →
  1. April 26, 2010 4:40 pm

    “It seems to me that laws of nature and physical phenomena are not “new” as required by §101, and this is why they are excluded as subject matter. ”

    It may seem that way to you, but there is opinion after opinion stating otherwise. Indeed, many judicially penned decisions go out of their way to knock down this idea.

    • April 28, 2010 11:39 am

      6, I have enjoyed your comments Patently-O, assuming you are the same person, and I thank you for taking the time to read and comment, and I hope you continue reading. As to your (somewhat intemperate) comments, I will address them in order:

      “Actually it does [make sense to limit patented subject matter to tangible, concrete things], for a variety of reasons. These reasons range from the banal “the constitution does not support promoting the “Invisible and Untangible Arts”” to the more extreme “YOU CAN”T PATENT MY IDEAS YOU FRAKIN THOUGHT POLICE!!!!!!!!!!!” and are fully fleshed out in between the two extremes. I won’t bore you with further details.”

      I disagree. As I said, as technology evolves, patent eligibility should be broadened to accommodate new innovation. The Constitution does not prohibit this, and I think it can be done within the existing framework of §101. The advantages to this approach outweigh the disadvantages.

      “Did you say you were new to this discussion? I’m assuming, based upon recollection, and your post that you are. Very green indeed.”

      I am a law student; therefore technically I am “new,” however I feel that my arguments are complete and reasonable. In the legal world, personal attacks do not strengthen an argument. Instead, it looks like you disagree but cannot articulate why. If you have something persuasive to say, I would be interested to hear it.

      “It is a good thing we have people with a brain sitting on the bench o the USSC then.”

      That is funny; I guess the drafters of the Patent Act did not have brains either, because that is what §101 dictates, as does discussion from the Committee Reports. It would be helpful if you could support your statement with some reasoning. Also, assuming by USSC you mean the Supreme Court, based on the oral argument transcripts from Bilski, the Court’s understanding of patent law seems far from complete.

      “There are no “fields” excluded from patentability. Anyone, in any “field”, can come up with a patentable invention. Yes, even in business methods. The problem is, the tards don’t know how to invent anything, they just like to come up with new “ideas” (see Bilski). For instance, Bilski could have invented the telephone and disclosed his method as a method of using the telephone. Oh, wait, Bell beat him to it.”

      I would say that a “field” excluded from patentability under Bilski would be anything that is not a process tied to a particular machine or involving a transformation of mater. Maybe you would prefer “invention” excluded from patentability?

      “It may seem that way to you [that laws of nature and natural phenomena are not “new”], but there is opinion after opinion stating otherwise. Indeed, many judicially penned decisions go out of their way to knock down this idea.”

      Good point, I could have clarified this more. I think you confuse when I say new, with §102 novelty, which is exactly the problem with current §101 interpretation. What I mean is essentially that sections other than §101 (namely §§102, 103 and 112) should serve to exclude patents that claim laws of nature/natural phenomena, assuming that they are claimed as one of the groups identified in §101 (process, machine, etc.) It only adds confusion when a novelty and/or obviousness analysis is part of the threshold inquiry of §101.

      Laws of nature and natural phenomena “exist” and are not “new.” I think §102 could work to make such claims unpatentable because §102 deals with novelty. However, as written I understand that it would be hard to exclude unknown natural phenomena under §102. An amendment to §102 may be appropriate, or maybe §103 could be used?

      I would be interested to read some cases that “go out of their way to knock down this idea.” It would be impressive to see how someone could argue that a law of nature is new. I’ll buy it if persuasive.

      This blog is not really intended to be a summary of existing law, but rather what the law should be to promote the Constitutional policies behind IP law (See my About section). Therefore, I do not claim to be reciting existing law. These are my thoughts on how to best promote progress of the useful arts via patent law.

      I appreciate your reading and commenting 6, and I look forward to hearing your opinions again soon, I will try to respond when I have time. Thanks for the opportunity to further flesh out my ideas.

  2. April 26, 2010 4:50 pm

    “it does not make sense to limit patented subject matter to tangible, concrete things.”

    Actually it does, for a variety of reasons. These reasons range from the banal “the constitution does not support promoting the “Invisible and Untangible Arts”” to the more extreme “YOU CAN”T PATENT MY IDEAS YOU FRAKIN THOUGHT POLICE!!!!!!!!!!!” and are fully fleshed out in between the two extremes. I won’t bore you with further details.

    Did you say you were new to this discussion? I’m assuming, based upon recollection, and your post that you are. Very green indeed.

    “My opinion is that if a claim is directed to a process, machine, manufacture, or composition of matter, it should be eligible patentable subject matter.”

    It is a good thing we have people with a brain sitting on the bench o the USSC then.

    “in the fields that are excluded from patentability.”

    There are no “fields” excluded from patentability. Anyone, in any “field”, can come up with a patentable invention. Yes, even in business methods. The problem is, the tards don’t know how to invent anything, they just like to come up with new “ideas” (see Bilski). For instance, Bilski could have invented the telephone and disclosed his method as a method of using the telephone. Oh, wait, Bell beat him to it.

  3. Anonymous permalink
    April 28, 2010 7:14 am

    You commit the mistake that other legal bloggers do, that you mix up the legal question and the policy question. Your article begins by asking what “should” be patentable, but dive quickly into parsing statutes.

    If, as I believe, the question at hand is really one of policy, then quoting the Constitution and §101 as if they were sacred writings is backward. Instead, you need to decide what the effect is that you want to achieve, and if those writings don’t achieve it, change them.

    • April 28, 2010 9:44 am

      Thanks, you raise a good point. I was concerned about trying to keep the arguments separated, but I guess I got away from it as I was writing. I updated the post to better demonstrate that the broad language of §101 conforms with my view of patentable subject matter.

      However, I do think that the Constitution should be read as a “sacred writing” that guides the effect I want to achieve (to promote the progress of science and the useful arts) I would not go so far as to suggest a Constitutional amendment quite yet.

      Thanks for the post.

  4. May 2, 2010 10:02 pm

    So what is your opinion of the “machine or transformation” test for patent protection eligibility? Would you equate “transformation” and “process”? If not, how would you distinguish the 2 concepts?
    http://www.generalpatent.com/media/videos/learn-more-about-general-patent-corporation

  5. May 2, 2010 10:34 pm

    My opinion of the machine or transformation test is that it is too limiting, and not forward-looking. I would not equate “transformation” and “process” because under Bilski, transformation refers to physical subject matter. A “process” is broader than that. Inventions are not limited to the physical realm, and patent eligibility should reflect this.

  6. May 3, 2010 4:35 pm

    I don’t have time to get back to ya in detail, but for now:

    “new innovation”

    “innovation” is a word that has come into fashion only recently. “innovation” and the “useful arts” differ substantially. I suggest that if you want to be on the winning side when this goes down that you look into, and understand the difference.

    “A “process” is broader than that.”

    Mhmm, but, on the other hand, is an “art” broader than that? Are you aware of what the USSC has said on the subject of what the 1952 Act’s rewording of “art” to “process”? Here’s a hint, check footnote 4 on page 6.

    http://www.cafc.uscourts.gov/opinions/07-1130.pdf

    Don’t let congressional butterfingers screw up your viewpoint. The USSC won’t let it mess up theirs.

    “Inventions are not limited to the physical realm,”

    According to whom? You? LOL.

  7. May 3, 2010 8:33 pm

    “I am a law student; therefore technically I am “new,” however I feel that my arguments are complete and reasonable. In the legal world, personal attacks do not strengthen an argument. Instead, it looks like you disagree but cannot articulate why. If you have something persuasive to say, I would be interested to hear it.”

    “I appreciate your reading and commenting 6, and I look forward to hearing your opinions again soon, I will try to respond when I have time. Thanks for the opportunity to further flesh out my ideas.”

    I didn’t mean it to be a personal attack, I was simply wanting to make sure that I was clear that you were very green to the subject. Most of your “points” and reasoning I have knocked down and set straight many times, likely before you were taking your LSATs. I should further make the point that there is a huge volume of personally generated literature that touchs on this point that you seem quite unaware of.

    I have been writing on this topic for quite some time and I do not wish to rehash everything. Which is why I tried to be brief in my initial postings here.

    The most persuasive thing I have to say regarding your position is simply this: you put the cart before the horse, generally speaking, in your reasoning.

    You “find the arguments to limit patentable subject matter to simply be unpersuasive.” But you do not recognize that they very statement itself relies on a straw man argument restated. Specifically, this statement relies on the notion that not granting patents on certain types of claims is “limiting” patentability. It is doing no such thing. It is simply refusing to “expand” patentability beyond what it traditionally has been. The reason you make this mistake is because you assume, in your worldview, and in your cart that is in front of your horse, that everything (or at least everything that can be written in claim format) is patentable from the get go unless a judge says it is in a specially created judicial exception. Such was never the case, was not made the case in 1952 and should not magically be made the case now. You are putting the cart before the horse by making such an assumption. Instead of assuming everything to be patentable, we assume nothing at the outset of considering any claim with regards to its 101 eligibility and we must ask “is this patent eligable subject matter”? This is in stark contrast to assuming everything that can be reduced to a claim to be patentable and asking “is this not patent eligable subject matter”? Whether or not you like it or not, your position rests entirely upon doing the later.

    You reason further, it seems, that “inventors” and “inventions” are what we should call people coming up with claims to (or even creating/using irl) things like in the Bilski application and the reams of business method/software ridiculousness. You are again making an inappropriate assumption and putting the horse way in front of the cart in making such an assumption. Inventors and inventions in patent law are the people/things that make up/are patentable subject matter. The definitions do not go the other way around in so far as people/things that make up/are anything that can be written in claim format are inventors/inventions.

    Further you reason that “limiting patentable subject matter creates additional unintended consequences by limiting incentives to innovate and disclose in the fields that are excluded from patentability”. Again, you put the cart before the horse. You are treading the worn path of assuming from the get go that someone that comes up with something in a field that is “excluded” (here you should mean to say more properly simply not specifically included, I will explain below) from patent eligibiliy is an innovator and what they came up with was an innovation (here you also conflate “innovation” and “innovator” with “invention” and “inventor” as is so often done in the field).

    To see the difference in the use of the word “excluded” as used by you and others and in what is proposed by those holding a different position it is helpful to consider a HS and the cliques within. There are many cliques, perhaps the rocker kids, the emo kids, the athletic kids, and the rich kids. It might just so happen that no emo kids are friends with the rich kids but the rich kids don’t specifically have a mind not to be friends with the emo kids. The emo kids are not specifically excluded, but they’re not specifically included with the rich kids either. On the other hand, the rich kids may specifically exclude rocker kids from their group because none of them like rock. Thus the rich kids are indifferent to the emo kids, but exclude rocker kids.

    Your more sophisticated adversaries (the ones you need to be concerned about) in this patent law debate do not propose specifically excluding fields etc. they simply propose to not specifically include them or exclude them. In other words, to have the patent system be indifferent to them. Although, as a backup, if all else fails, then some on the other side would settle for a specific exclusion. The reason that they don’t want a specific exclusion is to avoid having to go through getting an exclusion everytime something new comes along and lawlyers try to make the same ridiculous assumptions as you have and lump it in with inventions when it plainly is not one.

    “I would be interested to read some cases that “go out of their way to knock down this idea.” It would be impressive to see how someone could argue that a law of nature is new. I’ll buy it if persuasive.”

    They don’t argue that they are new. And the court does not hold that they are new or not new. The court simply states that this is a non-issue with regards to 101 even in the face of amicie (usually) arguing that claim at issue are not new and 101 requires that it be new. The court then recites precedent to that effect where the USSC (iirc) specifically stated such. The precedent states that the “new” in 101 is a non-issue in so far as it is not grounds to reject a claim as not being new, and that this pricinple holds true even in the cases of the judicial exceptions.

  8. piencyTep permalink
    May 16, 2010 6:18 am

    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

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