Everything is Patentable

Among other posts, I plan to post a multi-part series on an article about patentable subject matter due out in the Tennessee Law Review this Fall.  Because the Federal Circuit is due to issue an en banc opinion on the subject sometime this month, I will likely need to make some changes.  As a result, some aspects of the article are still in flux, and any comments are much appreciated. 

The article makes the modest, though somewhat unorthodox, proposal that the Patent and Trademark Office (PTO) and courts should look to the statute – and only the statute – to decide what types of inventions should be patentable.  Secondarily, bad patents should instead be weeded out by more rigorous application of other patentability rules like obviousness. 

Background

For the uninitiated, the Patent Act sets forth the type of inventions that can be patented in 35 U.S.C. 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

However, the statute is not the end of the inquiry. The Supreme Court has stated that abstract ideas, mathematical algorithms, natural phenomena, and products of nature are not patentable. 

What’s the problem?

It seems that no one can figure out what constitutes algorithms, natural phenomena, or products of nature. 

• Algorithms are not patentable – unless they are part of a physical process, but (maybe) not if the algorithm can be calculated in the mind.   
• Combining two products of nature can be patentable, unless (maybe) the two products continue to do what they always did.  Just about everything is made from a product of nature at some point.
• Extracting from a product of nature can be patentable, unless (maybe) the extraction does not sufficiently purify and isolate the new extraction.
• Applying a natural phenomenon can be patentable, unless (maybe) the phenomenon is “simple,” even though no one had discovered it before.  Just about everything is based on a natural phenomenon.

These problems were never more evident than in the recent case of Lab Corp. v. Metabolite.  There, the patentees had discovered a simple but profoundly important natural relationship – elevated homocysteine levels in the human body means a vitamin deficiency.  Of course, there was no test for homocysteines at the time, either.  So, the patentees sought and received patent claims on, among other things, a particular homocysteine test, as well as the process for detecting vitamin deficiencies by testing homocysteines by any method.

In time, other homocysteine tests were developed, and the defendant started using those tests to determine vitamin deficiencies, and the plaintiff sued.  The case reached the Supreme Court without any real argument on whether one could patent a test based on the admittedly natural relationship between vitamin levels and homocysteines.  The Supreme Court asked the parties to brief the issue, and the patent world went wild.  Hundreds of law review articles, essays, press articles, blog posts analyzed the issue and made predictions.

The problem?  After more than 200 years of patent laws, shouldn’t we already know the answer to whether one can patent a test like this – measuring one chemical in the body to determine a particular diagnosis?  Really – we don’t know?  Isn't this pretty important?

The case turned out to be a giant let-down.  The Court dismissed certiorari as improvidently granted, and Justice Breyer wrote a dissent admitting that determining whether something is a natural phenomenon is difficult, but that this patent was nonetheless barred because it was a natural phenomenon.  Hardly a model of clarity.

What’s at stake?

The stakes depend on where you sit.  For some, the issuance of another patent protecting a method for exercising a cat with a laser pointer will lead to the downfall of humanity.  The more specific concern is that allowing patents on certain types of subject matter will lock up entire areas of inventive inquiry - for example, patenting DNA will halt research into lifesaving technology.  In future posts, I will argue that this concern need not be great if my proposal were adopted and also that the costs of subject matter bars can be great.

In any event, the stakes are limited to a few "hot" subject areas: business method and “mental step” patents, computer software, DNA, and the harnessing of natural phenomenon.  I will discuss a few of these areas in future posts, but in my next post I will discuss the weakness of precedent that purports to bar certain types of inventions.