Prometheus Bound: Supreme Court Muddles The Meaning Of Patentable Subject Matter...Again

Patentable Subject Matter in the U.S.

The nominal scope of patentable subject matter is defined in Section 101 of the Patent Act, which states: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor...." 35 U.S.C. § 101.

Manifestly, Section 101's language is sweeping. It is also not very helpful in any exercise to distinguish between statutory and non-statutory subject matter in the post-industrial age. Even the definitions of the preceding Section 100 add little flesh to these meager bones, specifying, somewhat circularly, that a process is a "process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material." 35 U.S.C. § 100 (emphasis added). Prior case law has rounded out the meaning of Section 101 by exclusion, identifying "laws of nature, natural phenomena, [and] abstract ideas" as categories of unpatentable subject matter. See Diamond v. Chakrabarty, 447 U.S. 303 (1980).

Before the age of business methods, the most prevalent obstacles to patentability were defined by Sections 102 (anticipation) and 103 (obviousness). As inventions have become less tethered to physical structure, however, there has been a renewed focus on the scope and application of Section 101. Last month, the Supreme Court tried once again to define the scope of patentable subject matter. The case, Mayo v. Prometheus, 566 U.S. (2012), was aptly named. For just like the eponymous Titan in Aeschylus's play, Prometheus was punished for "stealing fire" in the form of the "natural laws" claimed by its asserted patents.

Bilski v. Kappos: A Transformation in the Analysis

The Court last waded into the murky waters of patentable subject matter just two years ago in Bilski v. Kappos, 130 S.Ct. 3218 (2010). Bilski presented the Court with the question of whether claims directed to a business method "for buyers and sellers of commodities in the energy market to hedge against the risk of price changes" comprehended patentable subject matter. It also required the Court to consider whether a Section 101 analysis could be exclusively conducted with the so-called "machine or transformation" test enunciated by the Federal Circuit at the appellate level. In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). Under this test, a process must either be tied to a particular machine or apparatus or must transform a...