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Monday, August 13, 2012

Two Types of Patentability Arguments

In debates about patentable subject matter, we tend to see two types of arguments that something should not be patentable. The first type is an argument directed to the embodiment. For example, many people object to patents on human clones. The objection here is categorical, and it is directed to the physical thing that the patentee has created. The critics would not be happy if the patent was narrower—if the patent covered only some human clones, or if it covered only the single human clone that the patentee actually made. This is the type of objection that people have in mind when they describe patentable subject matter doctrine as being about a machete that takes broad swaths of inventions out of patent law.

But frequently, the objection in actual patentable subject matter cases is different: it is to the degree of scope being asserted, and not to the physical embodiment that has been created. Take the classic patentable subject matter case, O’Reilly v. Morse, dealing with Samuel Morse’s patent on the telegraph. Samuel Morse claimed a patent covering all devices that used electricity to communicate text. The Supreme Court held this was unpatentable because it effectively encompassed the “natural law” of electricity. What subsequent generations take from this is that there is some “categorical” exclusion of natural laws from patentable subject matter. This is an incredibly unhelpful way to understand the Morse case (not least because the Supreme Court later upheld Alexander Graham Bell’s claim to using electricity to communicate voice).

A far better way is to understand Morse is to first differentiate between the embodiment he created and the scope that he claimed. Nobody objects to a patent on Morse's embodiment—an actual telegraph machine with nuts and bolts configured in a particular way. And no patentee ever files a patent without an embodiment, as in writing only "I just thought that using electricity to communicate is a good idea, though I have no real-world machine to do it." What Morse did is abstractly describe his embodiment in his claim, because such abstraction results in greater monopoly scope. The objection that follows is that the claimed degree of scope creates more monopoly costs than the incentive benefits of the patent.

The key point is that the conceptual foundation of the argument is entirely different from the objection about human clones. An economic argument about the proper degree of patent scope—how much of a patent should Samuel Morse receive—is different from an argument about whether any patent should be granted at all due to the nature of the underlying embodiment (which tends to be moralistic). Current patentable subject matter jurisprudence reflects a pervasive conceptual conflation of these two types of argument. The "natural law" doctrine is cited both as an objection to Morse's patent on the telegraph and to a patent on human clones, but in fact they reflect entirely different underlying policy arguments that implicate different policy considerations.

For those who are interested, I discuss this topic in more detail in this article.

Posted by Tun-Jen Chiang on August 13, 2012 at 09:00 AM | Permalink

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