What Inventions Can't Be Owned?

  The bounds of intellectual property tend to be difficult to draw.  Where does one draw the line between an idea and something that can actually be owned?  Over time, courts and legislatures alike have tried to refine this idea, but it is still difficult to know where the line is drawn.  Ambiguity exists and remains a point of debate.  Specifically, it is an issue when determining the patentability of an invention.  On a fundamental level, we are still asking what types of things can and cannot be patentable?  Or in other words, what inventions just cannot be owned?

            It is important to clarify what we are discussing here.  In order for an invention to be patentable, it must satisfy a myriad of statutory requirements.  It must be novel, meaning it cannot be an invention that already exists.[1]  It also must be non-obvious, which means that it cannot be a simple combination or rehashing of existing inventions.[2]  However, while you could write entire books just on those requirements alone (and a number of other requirements), that is not what we are discussing here.  What has become an issue is exactly what can be patented.  In other words, what subject matter is patent eligible. 

            Patent eligible subject matter stems from 35 U.S.C. § 101.  This section states the following: “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, subject to the conditions and requirements of this title.”[3]  It is important to note that this statute does not explicitly state what is “patent eligible,” but rather implies what is patent eligible by explaining the inventor of certain categories of things may receive a patent.[4]  According to the wording in the statute, one can only receive a patent for something that can be a process, machine, manufacture, or a composition of matter.[5]  Those categories are clearly fairly broad, but again, they define what can be patented, not what cannot.  This has allowed courts to come to their own interpretations of what types of things would specifically be unpatentable subject matter.  Over time, courts have defined abstract ideas, natural laws, and natural phenomena as categories of things that simply cannot be patented.[6] 

            In theory, this is rather simple.  You can't own things that naturally occur, like gravity.  It falls in line with the statutory language, as you did not “invent” gravity, so you cannot get a patent for it.[7]  Similarly, you cannot own an abstract idea.  That is because they (along with natural laws and phenomena) are the basic building blocks of making things, and so if people were able to own them, then no one would be able to make stuff.[8]  But therein lies where this problem gets complicated.  The basic building blocks for pretty much all inventions are, in and of themselves, not patentable.  We know that eventually, they must be combined to create something patentable.  So where is the line drawn? 

            One of the main cases where this distinction is made is in Mayo Collaborative Services v. Prometheus Laboratories, Inc.[9]  In this case, the plaintiff sued for a patented method for administering a particular type of drug.[10]  Without getting too technical, the patent was for a process of administering the drug, then measuring the amount of that drug within the patient to better determine the correct dosage for that patient.[11]  The court found that this patent was effectively just trying to monopolize a law of nature, by patenting the recitation of that law.[12]  It was already just a known fact that when you administer a drug to someone, it builds in their system, and the patent basically just says to keep that in mind.[13]  The court states that an application of a law of nature such as this could be deserving of a patent, but it must add more than just that law.[14]  That is where we can draw our line between unpatentable building block, and a patentable invention: the inventor must add more.  This is usually referred to as the inventive concept, wherein a claim in a patent that is directed to a law of nature, natural phenomenon, or an abstract idea can still be patentable if the claim includes additional elements that add significantly more.[15] 

            Of course, while this can technically provide some guidance in what types of things can and cannot be patented, this is not the most clear.  In recent years, there has been some discourse as to whether such rules are actually beneficial.  Some have claimed that these rulings make patenting less predictable, as it is not based directly on a statute or things from the United States Patent and Trademark Office (USPTO).[16]  It is determined by the courts, and because of this the case law can be in flux and not as set in stone.[17]  Intuitively, this makes sense, even from the explanation given above.  While it is nice to say that in order to receive a patent for an abstract idea, you just need to add “substantially more,” this qualifier is difficult to define.  Sure we may have case law that suggests what it means, but patents are not granted by courts and juries.  The courts may have an idea of what they mean, but the examiners approving or denying patents might have a different idea.  It is a reasonable criticism to say that this could increase the ambiguity of patent eligibility, and that by doing so you are inherently disincentivizing investment within these types of innovations (if it’s less certain to be patentable, it’s less certain you can take advantage of that monopoly).[18]  The flip side of that argument is that judicial applications can aid in litigation matters.  Specifically, it provides precedent to help reduce the cost in litigating patents that really should never have been granted.[19]  Intuitively, this also makes sense.  We already discussed how you cannot just own a law of nature, or an abstract idea, because that would be too broad and limiting to society; however, people can still get patents for things that either are within these judicial categories, or are so adjacent to them as to effectively be close enough.[20]  Allowing the courts an avenue to deal with this could reasonably be beneficial. 

            As you can see, this is not an easy issue.  What type of subject matter should be patented is an important thing to consider.  As previously mentioned, there are still a lot of other requirements to get a patent that tend to be even more complex and more often debated.  However, this eligibility discussion still acts as a sort of foundation for what patents should be, that is, an initial check to ensure that we are okay with what people should be allowed to own.  Just like any other part of the law, the answer is not black and white.  I think we should consider what society thinks should be patentable.  What subject matter is just too unreasonable to provide an absolute monopoly?  Why is it important to draw the line specifically there?  I encourage you to think on it, because it is an interesting topic to consider and one that can have far reaching consequences in our capitalist society.  What inventions just cannot be owned? 

Written by: Justin Kocian

[1] 35 U.S.C. § 102.

[2] 35 U.S.C. § 103.

[3] 35 U.S.C. § 101.

[4] 35 U.S.C. § 101.

[5] 35 U.S.C. § 101.

[6] USPTO, Patent Eligible Subject Matter: Public Views on the Current Jurisprudence in the United States (June 24, 2022), https://www.uspto.gov/sites/default/files/documents/USPTO-SubjectMatterEligibility-PublicViews.pdf; see also Diamond v. Diehr, 450 U.S. 175 (1981); see also Bilski v. Kappos, 561 U.S. 593 (2010).

[7] 35 U.S.C. § 101.

[8] Gottschalk v. Benson, 409 U.S. 63, 67 (1972).

[9] Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66 (2012).

[10] Id.

[11] Id. at 74.

[12] Id. at 77–78.

[13] Id. at 79.

[14] Id. at 71.

[15] USPTO, Manual of Patent Examining Procedure § 2106 (III) (9th ed., rev. July 2022), http://www.uspto.gov/web/offices/pac/mpep/index.html.

[16]  USPTO, supra note 6.  

[17] Id. 

[18] Id.

[19] Id.

[20] See generally Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66 (2012).