The Current State of Patentable Subject Matter

The Current State of Patentable Subject Matter

The United States Constitution grants Congress the right “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”^[1] Congress has utilized this right to develop a federal system of patent laws, declaring that “Whoever invents or discovers any new or useful process, machine, manufacture, or composition of matter,” shall be entitled to a patent.^[2]

            This has come to be known as patentable subject matter. Those four codified categories—process, machine, manufacture, composition of matter—are the statutory categories of patentable subject matter. However, in a pair of recent cases, the Supreme Court decided to limit the breadth of subject matter eligibility. In Mayo Collaborative Servs. v. Prometheus Labs, Inc., the Court upheld an “important implicit exception.”^[3] In an attempt to limit patent grants to actual inventions, the Court held “laws of nature, natural phenomena, and abstract ideas are not patentable.”^[4] Discoveries, such as a new plant or mineral, or laws of nature like gravity cannot be the subject of a patentable monopoly.^[5] Nature, the Court reasoned, is “free to all men and reserved exclusively to none.”^[6]

            Specifically in Mayo, the Court held that a mere discovery of a mathematical relationship is insufficient for patent eligibility.^[7] Instead, the inventor must do “significantly more” than discover and apply the natural law.^[8] In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the Court boiled down Mayo to a two-step analysis: first, whether the patent claims are directed to one of those three judicial exceptions, and second, whether the inventor utilized an “inventive concept” which transformed the claim from a law of nature to a patent-eligible application.^[9]

            The Court acknowledged this approach was about incentivizing innovation.^[10] Thus, the balance of what is eligible balances among promoting the discovery of those natural laws, but not restricting the use of the “building blocks of human ingenuity.”^[11] Surely, discovering gravity was a useful innovation for human society, but the law is too fundamental to the nature of the world to warrant patent protection. Additionally, the Court must not let this exception “swallow all of patent law.”^[12] All discoveries rely on some law of nature at some level, thus, a balance must be struck.

            This recent jurisprudence by the Supreme Court has left academia, as well as the Federal Circuit, in a frenzy. The Federal Circuit has struggled to find medical inventions that satisfy the Mayo test, and the same is true for business methods regarding Alice.^[13] Indeed, Circuit Judge Alan Lourie has expressed discontent with the current patentable subject matter jurisprudence, and argued for limiting the judicial exceptions to laws of nature themselves, but not the diagnostic tests that apply them.^[14] However, Judge Lourie, and the entire Federal Circuit, felt bound by the Supreme Court’s decisions in this realm.^[15]

            Figuring out how to make sense of the Court’s jurisprudence has kept scholars busy. Some have dubbed the current state of patent eligibility a “conundrum.”^[16] According to James Major, not only has the Court’s decisions created uncertainty in the inventor’s domain, they also lack interpretive merit.^[17] John R. Thomas has also outlined the issues which arise from uncertainty in the information technology and life sciences domains.^[18] He quotes Circuit Judge Richard Linn, of the Federal Circuit, who declares that there’s “no reason, in policy or statute,” that some “breakthrough invention[s] should be deemed patent ineligible.”^[19] Thomas proceeds to provide some potential solutions for Congress to take to resolve this issue.^[20] Furthermore, Michael Borella explains that this jurisprudence makes an “intellectually dishonest” litigation strategy of “baiting-and-switching” too easy.^[21]

            The widespread discontent with the current state of patent eligibility makes the Supreme Court’s next steps worth watching. The Court is currently weighing whether to take the case of American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, which cuts right at the issue of subject matter eligibility.^[22] In American Axle, the district court and Federal Circuit applied the Court’s Alice-Mayo framework, and denied patent-eligibility, considering the claims at issue a mere application of Hooke’s law.^[23] In its brief to the Supreme Court, American Axle claimed to be desperate for guidance on this issue, almost begging the Court to reconsider its patent eligibility jurisprudence.^[24] Whether the Court will clean up this area of the law, reinforce its recent precedents, or leave this matter for another day, remains to be seen.