An Appeal to Reason Post-Myriad and Mayo—to Follow the Statute and the Constitutional Plan for the U.S. Patent System When Deciding Questions of Patent Eligibility
By Garth Janke
Portland Intellectual Property is the law office of Garth Janke, a registered patent attorney in Portland, Ore. Janke received a Masters degree in engineering from U.C. Davis in 1980, was a practicing engineer at Hewlett Packard in California and Oregon, and received his J.D. from Stanford in 1994.
Section 101 of the Patent Act defines utility patent eligibility: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter … may obtain a patent therefor … .”1But the Supreme Court has perceived a need to add three “judicial exceptions:”
Exception (1) is widely accepted in substance, except that there is confusion over the meaning of the term “abstract idea.”5 But the court has provided at least two definite examples–mathematical algorithms6 and “the concept of hedging.”7 These examples are enough for inferring what the term generally means, and they are also enough for seeing that exception (1) already follows from the statute.
The understanding necessary for seeing that exception (1) already follows from the statute is also necessary for seeing the larger problem, which is that exceptions (2) and (3) are inconsistent with both the statute and the constitutional plan for the U.S. patent system.
The Constitution authorizes federal patent protection according to a plan:
It follows from this plan that there are only two constitutionally contemplated requirements for patent subject matter: (1) it must promote Progress; (2) the Progress it promotes must be “of useful Arts.”
It follows from these two requirements that abstract ideas like mathematical algorithms and the concept of hedging are not patent eligible because they do not satisfy the “of useful Arts” requirement, because they are not “useful” without being applied to produce useful results. For example, a mathematical algorithm for instructing a rubber molding press when to open9 is not useful by itself; it only becomes useful when it is used to open a rubber molding press, and so it is only patent eligible as part of a process that includes opening a rubber molding press.
It also follows from Section 101 that abstract ideas like mathematical algorithms and concepts like hedging are not patent eligible, because Section 101 also requires that patent subject matter be useful. This is known as the “utility” requirement.
The utility requirement also rules out patent eligibility for natural laws (like E = mc2) as well as some natural phenomena. Natural laws aren’t useful because, by themselves, they are just descriptions–they can’t do anything. If a natural law is explained in a writing, such as a textbook, it is copyright subject matter. To be useful and thereby become patent subject matter, a natural law needs to be put to practical use.
Likewise some natural phenomena are not useful unless put to practical use. For example, practical use could theoretically be made of an earthquake by using it to generate electrical power, but earthquakes by themselves are not considered useful to humankind. But there are other natural phenomena that are useful by themselves, like genes. These may be thought of as useful inventions of nature.
Section 101 also implies a requirement for human creation through its “new” (“new and useful”) requirement. While something naturally occurring can be newly discovered, it would not be new unless the person who discovered it also created it.
It has been said that exception (1) is not required by the statutory text.11 But if that is the court’s view it should explain, because it appears that exception (1) is required by the statutory text, not to mention the text of the Constitution.
More importantly, however, the remaining exceptions (2) and (3) are inconsistent with the statutory text and the text of the Constitution.
Taking the Constitution first, again, there are only two constitutionally contemplated requirements for patent subject matter: (1) it must promote Progress; (2) the Progress it promotes must be “of useful Arts.”
The “promoting Progress” requirement self-evidently corresponds to the statutory requirements for novelty12 and non-obviousness,13 measuring whether the invention advances the state of the art, and the requirement for disclosure,14 measuring whether the patent discloses enough to teach the public how to make and use it. It is also self-evident that the “of useful Arts” requirement corresponds to Section 101 and defines eligibility–the type of subject matter that is capable of being patented provided that it promotes Progress.
Both exceptions (2) and (3) allow for (and are used for) subverting the statute and the constitutional plan by excluding new and useful subject matter from patent eligibility. Exception (2) does so on a premise that inventors are not entitled to “preempt” abstract ideas (or natural phenomena, or laws of nature–the logic is the same); and exception (3) does so on a premise that an inventor hasn’t invented anything if the inventor’s contribution is limited to conceiving an abstract idea (or discovering a natural phenomenon, or formulating a natural law–the logic is the same), with no contribution being made to the mode of applying it.15
Neither premise fits the constitutional plan or its statutory implementation. Whether a patent would preempt an abstract idea (or natural phenomenon, or natural law), or whether the inventor’s contribution resides in conceiving an abstract idea (or discovering a natural phenomenon, or formulating a natural law) rather than in the mode of applying it, are questions that bear no logical relation to whether the subject matter claimed lies within the useful Arts, or whether it is a new and useful process, machine, manufacture, or composition of matter.
Moreover, exception (3) in particular is contrary to the explicit allowance in both the statute and the Constitution that inventors may be granted patents for discoveries. While a discovery by itself may not suffice to establish a protectable invention (depending on whether it can satisfy the “new and useful” requirement), the words of both the statute and Constitution are unambiguous that discovery is enough contribution to allow the person making a discovery to protect a practical application of that discovery.
The court applied exception (3), or at least its logic, in two recent cases involving inventions related to discoveries. The most recent was Association for Molecular Pathology v. Myriad Genetics.16 The claimed invention was an isolated gene. The inventor’s contribution was to find (or discover) the gene, which was, apparently, a difficult thing to do. But the gene (not isolated) was naturally occurring, and the inventor made no contribution toward isolating it once it was found. So the court said the invention wasn’t eligible for patenting.
But it wasn’t possible to isolate the gene without finding it first. And so the inventor’s contribution was nothing less than everything that was needed to realize the invention.
Isolated genes are not naturally occurring, so they don’t violate exception (1), and isolating the particular gene at issue was useful for reasons the court itself acknowledged.17 So, according to the constitutional plan the isolated gene would be eligible for patenting, and that should have been a clue. Moreover, it was a new and useful composition of matter as required by the statute, and that should have ended the inquiry.
The other recent application of exception (3), or at least its logic, in the context of discoveries was in Mayo v. Prometheus.18 The claims were drawn to a process (a) of administering a first amount (or dosage) of a drug known to be therapeutic for a particular disorder, in response to which the body metabolizes the drug, (b) determining the level of one of the metabolites, and (c) based on that determination, deciding whether a second amount of the drug to be administered subsequently to the patient should be increased or decreased relative to the first amount. The court said that the process was ineligible for patenting because the patent simply described a law of nature.19
But the patent didn’t simply describe a law of nature. The patent also described–and more to the point it claimed–a process, a plan of activity responding to a discovery of the body’s reaction to the drug. The court again used the logic of exception (3) to exclude the process from patent eligibility. It considered the invention to be a non-inventive practical use of a natural law.
But again, whether or not it was inventive to take advantage of the natural law (or natural phenomenon20) in the manner the inventor did, the process was new and useful, and that is all that is required for patent eligibility according to both the statute and the constitutional plan.
The magnitude of the dissonance between judicial exceptions (2) and (3) and the statute and constitutional plan may become more apparent upon consideration of an example of their application in the context of abstract ideas. The example is based on recent news that plans for making a working firearm with a 3D printer were available for download over the Internet.
Those plans would be a series of mathematical instructions suitable for input to a 3D printer–a mathematical algorithm, something the court definitely considers an abstract idea, yet something that completely specifies a working firearm. So consider how exception (2) would apply to patenting the firearm. Exception (2) applies whenever there is substantially no practical use for an abstract idea other than the one that would be patented.21 So, a patent on a firearm made by a 3D printer would violate exception (2) by preempting the algorithm used to instruct the printer, because there is no practical use for an algorithm adapted to instruct a 3D printer to make a firearm other than to cause a 3D printer to make the firearm–activity which would be preempted by the patent. The firearm could not be patented according to exception (2).
Now consider how exception (3) would apply to patenting the firearm. 3D printers are existing technology, so an inventor’s contribution to any product that could be made by a 3D printer would necessarily reside wholly in an abstract idea–the instructions specifying the product, rather than the mode of applying that idea–feeding the instructions into a 3D printer to make the product. The firearm could not be patented according to exception (3). The firearm could not be patented if either of exceptions (2) or (3) is applied, regardless how innovative it is.
The logic of the 3D printer example can be extended to all types of patented subject matter. Patents employ words and drawings for specifying an invention, and the law requires that this specification enable a person to make the invention.22 So the words and drawings in a patent that specify an invention to enable a person to make it are just like an algorithm that specifies a firearm to enable a 3D printer to make it. So if a specification of a product or process in mathematical terms is an abstract idea, it must be that a specification of the same product or process in equivalent terms of words and drawings is likewise an abstract idea.
With this equivalence in mind, it follows that any patent will violate exception (2) for the same reason a patent on the firearm would preempt the algorithm in the 3D printer example, because there is no practical use for the specification of a product or process claimed in a patent other than to than to make or use something preempted by the patent.23
The law also requires that a patent’s claims define the inventor’s contribution,24 and that the specification enable practical use of the invention without requiring any additional inventive contribution.25 So by law all the innovation in a patented invention must reside in abstract ideas rather than the mode of applying them, just like in the 3D printer example, and so any valid patent stands in violation of exception (3).
If exceptions (2) and (3) are inconsistent with patenting anything, it follows that they are being arbitrarily applied. A thought experiment may help to demonstrate that this is indeed the case.
Suppose someone invents an earthquake predicting machine–a black box containing a complex combination of electrical and mechanical components, which a user can place on the ground, which will sound an alarm 24 hours in advance of any earthquake above a predetermined magnitude at that location. Assuming the machine works, it seems unlikely the court would see a reason to apply a judicial exception and deny the machine’s patent eligibility.
But now suppose that what makes the prediction inside the box is a general purpose computer, and that replacing the complex combination of electrical and mechanical components is an equivalently complex algorithm for instructing the computer to perform the same functions.
Now it seems likely the court would see exception (2) as being applicable to deny patent eligibility, because it would at least appear26 that a patent on the machine would preempt an algorithm/abstract idea, because there would seem to be no practical use for an algorithm developed for predicting an earthquake other than to predict earthquakes.
Now it also seems likely that the court would see exception (3) as being applicable to deny patent eligibility because, borrowing from an example provided by the court in Parker v. Flook,27 it would be no more inventive to use an algorithm developed to predict an earthquake for predicting an earthquake than to use the formula C = 2πr for computing the circumference of a wheel.28
So, does it make sense that there could be two machines producing identical useful results, only one of which would fall within judicial exceptions and therefore be ineligible for patenting? And does it make sense that there should be anymachine, or process, that could accurately predict earthquakes but that would not even be eligible for patenting?
According to the statute, the eligibility question is not whether the claimed invention is, or would preempt, or contains no significantly inventive contribution beyond, an abstract idea, natural phenomenon or law of nature. Rather, it is whether the level of abstraction of the abstract idea, natural phenomenon or law of nature is too high to satisfy the specified statutory requirements.
This is perhaps easiest to see in the case of inventions involving algorithms. Algorithms are merely instructions for manipulating numbers. If the numbers input to an algorithm are meaningless, the output of the algorithm will likewise be meaningless and therefore of no practical use. But if a claim to an algorithm is made at a reduced level of abstraction specifying meaningful real-world data as input to the algorithm, the output could be useful. It might even be capable of predicting an earthquake.
Other types of “abstract ideas” may likewise crystallize into something useful in the practical sense demanded of patent subject matter at lower levels of abstraction. For example, the court should have recognized in Bilski29 that no claim was being made to the concept of hedging in general–all the claims were limited to new30 and useful31 applications of that concept to methods of conducting financial transactions.
Natural laws like E = mc2 differ from algorithms in that they are discovered rather than invented. But Section 101 treats invention and discovery the same, and so the logic of the patent eligibility analysis must be the same. For example, a claim to E = mc2 would be at too high a level of abstraction to be eligible for patenting for lack of utility if either “E” or “m” could be arbitrary or random numbers, but not if it specified less abstractly that “E” was for determining an amount “m” of real material needed to serve a useful purpose such as fueling a nuclear reactor.
Finally, the level of abstraction of a claim to a natural phenomenon that does not have intrinsic utility, like an earthquake, would need to be low enough to define some thing or process that is both new and useful before it would be eligible for patenting. By contrast, if the natural phenomenon is intrinsically useful, like a gene, the level of abstraction would only need to be low enough to define something new–a human act of creation such as isolating the gene.32
It is always a separate question whether a level of abstraction low enough to establish eligibility is too high for patentability, calling for a separate analysis governed by the statutory requirements of Sections 102, 103 and 112.
There are some who perceive that the court has gotten “off track” in its patent eligibility jurisprudence, but believe that Congress can make the needed correction. They may be too optimistic. Congress was not obligated to extend patent protection to everything the Constitution allows, but it seems to have come at least very close in Section 101, by broadly making any new and useful process, machine, article of manufacture or composition of matter eligible for patenting by whoever invents or discovers it.
What more could Congress say? What more should Congress need to say? It is up to the court to explain why a claimed invention the court declares to be ineligible for patenting is not a new and useful process, machine, manufacture, or composition of matter, or why the person making the claim did not invent or discover it. The judicial exceptions don’t answer these questions.
What seems to be needed is an effort to persuade the court–an appeal to reason–that the judicial exceptions do not provide satisfactory alternatives to following the statute and the constitutional plan for the U.S. patent system when deciding questions of patent eligibility.
3 The exception derives from Gottschalk v. Benson, 409 U.S. 63, 175 U.S.P.Q. 673 (1972), in the context of abstract ideas, and more particularly a mathematical algorithm (see note 6 infra). The logic is equally applicable to natural phenomena and natural laws.
4 The exception derives from Parker v. Flook, 437 U.S. 584, 198 U.S.P.Q. 193 (1978), in the context of abstract ideas, and more particularly a mathematical algorithm (see note 6, infra). The logic is equally applicable to natural phenomena and natural laws, to which the court extended it in Myriad (see note 16 and accompanying text, infra) and Mayo (see note 18 and accompanying text, infra), respectively.
5 See, e.g., Mark A. Lemley et al., “Life after Bilski,” 63 Stan. L. Rev. 1315, 1316 (2011) (cited with approval in CLS Bank Int’l v. Alice Corp. Pty. Ltd., 685 F.3d 1341, 1349, 2012 BL 168784, 103 U.S.P.Q.2d 1297 (2012) ) (“Put simply, the problem is that no one understands what makes an idea ‘abstract.’”).
15 See Flook, 437 U.S. at 591-92. The court said that a scientific truth, or mathematical expression of it, is not a patentable invention, so the principle or mathematical formula must be considered as if it were well known. This implies that the inventor, to be considered to have invented anything, must make an inventive contribution above and beyond the principle or mathematical formula. See also Myriad. In Myriad, the court said that the mode of applying a natural phenomenon–isolating a gene from its surrounding genetic material to produce an isolated gene–was “not an act of invention,” and therefore the result was not patent eligible, regardless how “[g]roundbreaking, innovative, or even brilliant” the discovery was.
18 Mayo Collaborative Services v. Prometheus Labs. Inc., 132 S. Ct. 1289, 2012 BL 66018, 101 U.S.P.Q.2d 1961 (2012) (83 PTCJ 727, 3/23/12).
26 It may not be possible to know whether an abstract idea will have practical applications other than the one claimed, and therefore that exception (2) applies, at the time the decision is made to apply it, because a new practical application for a given abstract idea might be invented or discovered in the future.
29 Note 7 supra (claimed process of conducting financial transactions according to the concept of hedging held ineligible for patenting by analogy to Benson and Flook because the concept of hedging is an abstract idea just like a mathematical algorithm).
32 For another view of the significance of levels of abstraction to patent eligibility see Jeffrey E. Young, “A Level of Abstraction Approach for Post-Bilski Section 101 Analysis,” 84 Pat., Trademark and Copyright J. 875 .