Legal Commentary

Given that patentable subject matter rules are very difficult to apply, I make a modest proposal.  Rather than relying on judicially made limits on the types of patents allowed, we should instead allow any patent that falls into one of the statutory categories, but then more rigorously apply the other patentability standards:  utility, novelty, non-obviousness, and specification.  If these standards are strictly applied, the worries we might have about allowing certain types of patents are mitigated, because bad patents will still be rejected. 

Here is what I mean by rigorous patentability.  Most of these rules already exist in the precedent, even if they aren?t enforced as often as they should be.  Some, however, are a bit of an extension of current law.

Statutory Category: A claimed invention must fit into one of the statutory categories: ?process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.?   While rare, there are ?inventions? that may fall outside these categories.   The question should not be whether a claim is, for example, a law of nature, but instead whether the claim falls into a statutory category.

Utility: A claimed invention must meet ?practical utility? standards; the invention must do something.   Thus, process and product claims must lead to an end result that can be used to some practical end, and not just be useful for further study.

Novelty: A claimed invention must be ?new.?   No patent should issue for compositions that exist either artificially or naturally, unless they are purified to a point that the invention is different in kind from what exists in nature.   This standard may be difficult to apply, but the focus of patentability decisions should be on novelty and not subject matter.

Obviousness: A claimed invention must be non-obviousness, and the determination of obviousness should not be limited to any particular test - the ability to reject patents as obvious requires flexibility. For example, ?brute force? inventions that are the result of computer processing time or repetitive combinatorial experiment rather than invention would usually be obvious.  Compositions created through the application of known processes to known starting materials would also be obvious.  Inventions that were ?obvious to try? would be obvious. Inventions that are combinations of known elements that do not provide for functionality beyond the known elements would be obvious.   Of course, not all inventions meeting the above criteria would be obvious ? those determinations would have to be made on a case-by-case basis.

Specification: A claimed invention must be supported not only by a detailed enabling disclosure about how one may make and use the invention, but also by a full description of the invention, such that the PTO, courts, and other interested parties can determine whether the inventor actually invented the fullest scope of claimed subject matter and ?possesses? all the elements of the claimed invention.

I?m certain this all sounds pretty abstract.  In the remaining couple of posts in this series, I?ll provide some concrete examples that apply rigorous patentability rules to areas that are currently hotly debated subject matter issues.