Document Type
Article
Publication Date
Fall 2012
Abstract
The definition of statutory subject matter lies at the heart of the
patent system. It is the reflection of Congress's policy decision as to
what types of inventions one may patent. While the congressional
definition of statutory subject matter (in what is now 35 U.S.C. § 101)
has remained fundamentally constant since 1790, the Supreme Court
has reinterpreted and redefined statutory subject matter several times,
leaving lower courts with the frustrating task of trying to develop a
coherent jurisprudence against a changing landscape. This
inconstancy has introduced uncertainty for inventors who are trying to
make the fundamental decision of whether to maintain a trade secret
or seek patent protection for an innovation. Notwithstanding repeated
admonitions to the lower courts not to read words into the patent
statute, the Supreme Court itself has created three exceptions to the
categories of statutory subject matter established by the clear words of
§ 101: laws of nature, physical phenomena, and abstract ideas. This
intervention would be defensible if it were constitutionally required or
if the statutory language were ambiguous, but neither is the case. In
fact, the Court's particular intervention is counter to the constitutional
mandate to promote progress. In certain cases, this disincentive may
be sufficient to prevent promising new technologies from ever
developing. This Article proposes that Congress should consider the
judicially created exceptions to the statutory categories of patentable
subject matter and amend the statute so as to end judicial intrusion
into patent policy making.
Recommended Citation
Max S. Oppenheimer,
Patents 101: Patentable Subject Matter and Separation of Powers,
(2012).
Available at:
https://scholarworks.law.ubalt.edu/all_fac/889