By: Eileen M. Kane
The Patent eligibility doctrine often surfaces when new
technologies or scientific imperatives create the possibility of
patenting novel forms of subject matter. Its relative
dormancy should not be mistaken for obsolescence. The
possession of patentable subject matter is a prerequisite to
obtaining patent protection. Eligibility is readily satisfied
in most patenting efforts. At the margins of permissible
patenting, however, are the categories of laws of nature, natural
phenomena, and abstract ideas, which the Supreme Court has declared
to be ineligible for patent protection. These categories, the
Court reasoned, must remain in the public domain.
Unfortunately, the actual protection of laws of nature, natural
phenomena and abstract ideas from private appropriation is met with
considerable ambiguity in patent law practice, thereby reducing
opportunities for doctrinal formation.
This Article examines how issues relating to patentable subject
matter are avoided or indirectly asserted by litigants, reducing
the number of formal patentable subject matter conflicts. In
order to contribute to the ongoing project of defining the public
domain in the life sciences, the Article looks to the definitions
of laws of nature put forth from the legal system, comparing these
definitions to those developed within the philosophy of science, in
order to posit a dynamic conception of the laws of nature which is
most relevant to knowledge production in modern scientific
research. The Article further proposes that the
judicially-maintained exclusions from patentable subject matter
should be expressly codified by Congress in a manner analogous to
the statutory subject matter exclusions in copyright law.
Several trends which suggest that patentable subject matter
conflicts in patent law could emerge more, not less, frequently in
the future. Further reductionism in the research programs of
21st century science (genomics, proteomics, and nanotechnology)
suggests that patenting efforts at the margins of the unpatentable
may be more likely. In addition, the increased involvement of
a vigorous public interest sector in intellectual property law and
the development of a formal opposition procedure in U.S. patent law
will likely combine to generate further conflicts over patentable
subject matter. Finally, following the recent example of the
Supreme Court's attention to the issue of patentable subject matter
in Labcorp v. Metabolite, judicial vigilance may result in
further instances where the issue of patentable subject matter is
raised by the courts sua sponte.
Although conflicts over patentable subject matter are
infrequent, they are not trivial. The doctrine can authorize
or prohibit the co-modification of scientific subject matter.
Furthermore, the prohibitions on patenting laws of nature, natural
phenomena and abstract ideas can be interpreted broadly or
narrowly, with consequences for the integrity of the patent system
and the progress of the scientific enterprise. The goals of
each, theoretically, are not in conflict.