Patents 101: Patentable Subject Matter and Separation of Powers

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Max Stul Oppenheimer · 15 Vand. J. Ent. & Tech. L. 1

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 policymaking.