How to Explain the “Implicit Exceptions” to Patent-Eligible Subject Matter

Wesley D. Markham · 16 Vand. J. Ent. & Tech. 353

Abstract

The Supreme Court has as of late taken renewed interest in what inventions or discoveries are deserving of entry into the patent system. Section 101 of Title 35 opens the door to “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Certain things—now referenced by the Court as “laws of nature, natural phenomena, and abstract ideas”—necessarily fall outside the statute’s scope. The question is, why? Not why as a matter of policy, but why as a matter of law. The Court has not yet picked (or at least, articulated) any particular legal justification for discovering or creating these “implicit exceptions” to § 101. Upon close examination, the several rationales present in the Court’s opinions are not altogether satisfying. Collectively, though, they have swayed the entire Court. This Article explores the Court’s unanimous acceptance of the implicit exceptions as an aggressive use of the constitutional avoidance doctrine: broad patents on things too close to “abstract ideas” or “laws of nature” might impede progress, which might violate the preamble of the Intellectual Property Clause. Such interpretive methodology admits of no limiting principle.