The Patent Option

Abstract

This Article delineates the proper scope of patentable subject matter and the two key exclusions namely scientific discoveries/laws of nature on the one hand, and mental steps/abstract ideas, on the other hand. The Article considers the exclusions normatively and in particular whether patenting subject matter that should be excluded may prevent the “sunshine of science from generating some green shoots of scientific progress” and thus be counterproductive in promoting innovation. The Article suggests, in the wake of recent Federal Circuit and Supreme Court jurisprudence, that both exclusions are related and proposes a unique test to avoid both errors (patenting nature and mental steps).

The Author hopes that the Article usefully illuminates the policy debate and its more theoretical aspects. Its analytical anchor is the traditional distinction between science (scientific research to produce knowledge), on the one hand, and technology (sometimes bundled under the appellation research and development (R&D) or “applied science”). The distinction is used as a tool to delineate the domain of patents. The Article suggests that the traditional distinction between science and technology can be operationalized for purposes of patentability analyses as a distinction based on the target of the inquiry, namely between existing targets (waiting to be discovered) and the engineered (or created) world. The Article also discusses the exclusion of abstract ideas sometimes erroneously patented in the guise of business models or computer-implemented inventions. The exclusion is related because in producing knowledge, science produces new ways of thinking and “mental steps.” The Article suggests why and how it can be avoided using the same test. The last part of the Article formulates the proposed test by combining the two exclusions (scientific discoveries/laws of nature and mental step/abstract ideas) as vertical and horizontal axes of a patent “target.”