Today's Date: September 21, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

What Should be Patentable? – A Proposal for Determining the Existence of Statutory Subject Matter Under 35 U.S.C. Section 101

Written by Andrew Beckerman-Rodau
Professor of Law, Suffolk University Law School
Professor Beckerman-Rodau's Publications
IP Podcasts on iTunesU
Posted: June 27, 2013 @ 9:45 am
Tell A Friend!


The recent Supreme Court decision in the Myriad case, like past decisions, did not announce a clear rule that can be extrapolated from the decision and applied in other technology areas. Consequently, the determination of what subject matter is patent-eligible continues to be unclear.  Patent law specifically identifies four broad categories of subject matter—process, machine, manufacture, or composition of matter—that are patent-eligible.  Although very few things fall outside these categories, the Supreme Court has engrafted some exceptions and limitations onto these statutory categories.  Patentable-eligible subject matter that is otherwise within these categories is deemed ineligible for patent protection if it is a “law of nature,” a “physical phenomenon,” or an “abstract idea.”  The precise meaning or scope of these exceptions and limitations are difficult to enunciate despite the numerous courts that have grappled with this issue. These exceptions and limitations can be viewed as labels that are attached after a judicial balance has been made between competing or conflicting underlying concepts. Justice Thomas recognized that balance in Myriad when he wrote, relying on both Mayo, and Chakrabarty, that “patent protection strikes a delicate balance between creating ‘incentives that lead to creation, invention, and discovery’ and ‘impeding the flow of information that might permit, indeed spur, invention.’”

This balance provides the underlying justification for viewing some discoveries as being so basic or fundamental that everyone should be free to utilize them. Nevertheless, it is imperative that a clear rule or test, based on this justification, is enunciated by the Supreme Court. Any resulting rule will be imperfect because it will potentially be over or under inclusive. Additionally, it will have disproportionate effects on different industries. But the importance of a uniform and predictable rule outweighs these deficiencies because it allows a business enterprise and courts to more easily make decisions. Recent Supreme Court patent decisions have generally rejected bright line tests in favor of a more-opened ended or flexible approach. Unfortunately, this provides limited guidance to lower courts and consequently the issue remains unsettled.

Early stage research often produces discoveries such as previously unknown mathematical relationships, fundamental concepts, physical forces, biological data, or correlations.  These discoveries are fundamental building blocks which are very valuable starting points for engaging in future research that will lead to new technological products and processes that have real world practical applications.  Such discoveries are denied patent protection because they are potentially too valuable.  Granting patent protection would ultimately impede future innovation based on these building blocks.  Hence, fundamental building blocks are labeled as a “law of nature,” a “physical phenomenon,” or an “abstract idea” to signify they are not patent-eligible subject matter.  Once the level of innovation and development moves further downstream on the innovation continuum, the subject matter becomes patent-eligible at some point. Divining this precise point has eluded courts. The variety of new technology and the multitude of ways patent claims are drafted make it impossible to create a single rule for ascertaining whether something is patent-eligible subject matter.

My proposal is that courts should use the following rules, gleaned from Supreme Court decisions, to determine if a patent claim covers patent eligible subject matter.

In addition to the machine-or-transformation test for process claims, the following alternative tests are proposed for both product and process claims.  Multiple tests are necessary because no single test will produce predictable and consistent results in light of the different types of subject matter that can be patented and the variation in how patent claims are drafted. Although failure to satisfy the machine-or-transformation test is not determinative, in light of Bilski, it is suggested that failure to satisfy one or more of the following proposed tests should render a claim unpatentable for failure to claim statutory subject matter under Patent Law section 101.

  • The preemption test, which holds that a claim is not patent-eligible if it essentially preempts all meaningful use of a law of nature, natural phenomena, or an abstract idea in substantially all contexts.
  • The insignificant limitation test helps to recognize inclusion of limitations in claims that appear to limit claim scope, but in fact do not provide any significant practical limitation on claim scope, and therefore, the claim should be determined to cover unpatentable subject matter.
  • The equation test disallows a claim that amounts to no more than a disguised attempt to claim a formula, equation, or mathematical relationship.
  • The human intervention test provides that a fundamental discovery of something, such as a new plant species, a new mineral, a new compound, or a new biological material, is patent-eligible if it is altered or modified so that it is in a non-naturally occurring state and has properties that are not exhibited in its naturally occurring form.
  • Finally, the data comparison test negates patent eligibility if a claim merely covers the act of comparing data without more.

This essay is a based on the article “What Should be Patentable? – A Proposal for Determining the Existence of Statutory Subject Matter Under 35 U.S.C. Section 101”, 13 Wake Forest Journal of Business and Intellectual Property Law 145 (2013), available at:  http://lawprofessor.org/resources/pdf/articles/wake-forest-article.pdf and SSRN.

About the Author

Professor Beckerman-Rodau is a professor of law and co-director of the Intellectual Property Law Concentration at Suffolk University Law School in Boston. He is also an engineer and registered patent attorney. He is admitted to practice in Ohio and Massachusetts. Prior to joining the faculty at Suffolk, he was a tenured professor at Ohio Northern University Pettit College of Law. Professor Beckerman-Rodau has practiced patent and intellectual property law with law firms and corporations in Massachusetts, New Jersey, and Pennsylvania.

10 comments
Leave a comment »

  1. I found the first line of this piece to be seriously flawed.

    Unlike other 101 cases, the Myriad case (right or wrong) sets a very clear rule that is easily can be extrapolated.

    I am setting this aside to make sure tha thte rest of my reading is not adversely affected.

  2. “The preemption test, which holds that a claim is not patent-eligible if it essentially preempts all meaningful use of a law of nature, natural phenomena, or an abstract idea in substantially all contexts.”

    The big, unresolved question is how do you define “abstract idea”? An early Supreme Court case defined “abstract idea” as “a principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” I agree with this definition. However, the plurality opinion in CLS Bank opined that the claims therein were directed to non-statutory abstract ideas. This I strongly disagree with. The claims therein were directed to more than just a “fundamental truth” (if it was so fundamental, why did the claims pass 102/103?)

    I like your approach of “codifying” all the tests into one “master test.” But currently there is no clear, universally applied test for “abstract idea.” Do you have one you propose?

  3. I see little in your proposals that is not already the law and thus I see little reason for the article. Some of the things you mention as “tests” are now simply generally the law, and need not be explicitly enunciated further.

    As to patent leather’s question above, it seems Rader defined abstract idea well enough to suit most purposes in a recent decision.

  4. Dear Professor Beckerman-Rodau,

    Being that you are a guide for young minds (a teacher) I find the loose toss about of terms in your above post somewhat disturbing.

    Essentially all processes (and in particular the ones that were meant to be the patentable kind) are “physical processes”.

    I think you meant to say ‘naturally occurring phenomenon’ (that not intentionally mediated by the hand of man).

    The isolated BRCA1 and BRCA2 molecules are not ‘naturally occurring phenomenon’ but rather compositions of matter whose creation is intentionally mediated by the hand of man. The Supreme Court is simply wrong as a matter of science if they believe otherwise. We hould not be apologists for wrong-headed thinking.

    Essentially all processes of the kind that were meant to be the patentable kind are not only “physical processes” but also ones that make meaningful use of a [man-made] law of nature, of natural phenomena, and of one or more abstract ideas. The above proposal appears to simply say: shut the patent system down.

  5. My apologies for sounding negative, but the best thing that I can say about this article is that it is worthless.

    I see only a mishmash of the Court’s past views with no attempt at making sense of the views and a call to continue in this path with a ready-made excuse of “Multiple tests are necessary because no single test will produce predictable and consistent results in light of the different types of subject matter that can be patented and the variation in how patent claims are drafted.

    I see no improvement of clarity, and further, I feel that I can guess what the author feels were the ‘right’ decisions (and I still feel that the rules provided do not provide the ‘brightline’ guidance that lower courts would need to actually meaningfully apply the law.

    If the CAFC, a body that has been specifically sanctioned to bring clarity can only throw up their hands in disgust (in the recent CLS Alice case), this mash of rules will not provide meaningful guidance.

  6. I disagree with the preemption test and with the notion that an invention may be “too fundamental” to be patent-worthy. Fundamentality is not why “laws of nature” and “physical phenomena” are not patent-eligible. It is simply because they lack novelty – they already existed in nature prior to human discovery. Fundamentality is also not why “abstract ideas” and “pure mathematics” are not patent-eligible. It is simply because they lack utility – once they are applied in a useful form they become patent-eligible. A better legal solution to the problem of fundamentality is the ant-trust doctrine of an “essential utility.” The other specific tests that are proposed may be useful guidelines, but can all be traced back to the basic requirements of novelty, non-obviousness, and utility.

  7. Ron,

    A “law of nature” that is a new one is not “art” of the prior kind (that which has been practiced beforehand by artisans) but rather a new abstract “theory” (idea) devised in man’s head about how he believes the Universe operates.

    I am not surprised that Supreme Court Justices do not understand science or how the man-made “laws” regarding the nature of the Universe come into being.

    But I expect more of people who are scientifically literate.

    The so-called “Laws of Nature” are merely a subset of all the abstract ideas we have about our world and how it operates. Most of our ideas are complete delusions (for example that an object seen by our eyes has an inherent “color”) although a rare few may have validity (if rigorously tested and re-tested by science and found to have consistency of outcome as predicted by the so-called “laws” or models).

    The theory against patenting of naturally occurring phenomenon arises from the notion of prohibiting a taking away from the public of something that has beforehand already been “available to the public whether they knew it or not. For example if a fisherman “discovers” a new species of fish (now “isolated: from it watery habitat), he had no extra-ordinary hand in fashioning that fish and merely happened to be the first to stumble across it. The question then is whether he should be rewarded under patent law for that act of accidentally stumbling across it and being the first to report it.

    When it comes to Myriad, they did not “accidentally” stumble across the BRCA1, 2 molecules and the latter are not naturally occurring phenomenon. The Supreme Court simply got it wrong. We should stop being apologists for their malfeasances. At least Justice Scalia was man enough to admit that he did not understand this subject area. We should be men enough (or women) to explain to the Supreme Court that they got this one absolutely wrong (i.e. the Emperor is Naked in this instance).

    p.s. They also got Benson wrong. A renetrant register is physical apparatus. And no, decimal-coded binary was not “fundamental” to the progress of science and the useful computer arts.

  8. step back,

    I need to realign you just a little.

    But I expect more of people who are scientifically literate…

    The theory against patenting of naturally occurring phenomenon arises from the notion of prohibiting a taking away from the public of something that has beforehand already been “available to the public whether they knew it or not.

    Sorry, not quite (as the difference between 101 and 102/103 still exists is whispered under my breath).

    You are attempting to impute a time aspect that is not there into the jurisprudence of 101. There is no such ‘beforehand’ (whether known or not).

    Your view would ASSUME a rather old-school (catholic?) view of a steady state (even flat world, earth-centric) view of the universe. Your view would deny the fact that the universe itself evolves and changes and your view would deny that there are things outside the hands of man that did not exist ‘beforehand.”
    101 and 102/103 are simply formed from different policy considerations. This one in particular may be a subtle difference, but it is a difference in kind and not degree.

  9. anon,

    I didn’t say how far “beforehand”.

    But you are correct.

    The Universe and our planet /solar system is unfolding and evolving, not as a closed circle but as an ever widening spiral (till cold space death do us apart with the proverbial whimper rather than the expected bang).

    According to some scientists, from nothing we sprang and back to nothing we will devolve.
    In other words, all this debating is over “nothing”.

  10. EVEN BILL MAHER:

    See? Even Bill Maher agrees that the Supremes don’t live in the “real” world:
    http://www.huffingtonpost.com/2013/06/29/bill-maher-slams-scotus-voting-rights-decision_n_3521714.html