[author: Wayne Sobon]

I'd like to go back to some first principles and history.

Article 1, Section 8 of the Constitution neatly divided the promotion of, on the one hand:

• Science, the fields of knowledge and ideas, by securing exclusive rights to Authors of their Writings. Things like books and maps and charts.
• And the Useful Arts, where science and ideas are transformed into tools and actions in the world, by securing exclusive rights to Inventors of their Discoveries.

Basic ideas and science would remain free for all.

One of the first Congressional acts was the Patent Act of 1790, which granted patents to any persons that “have invented or discovered any useful Art, Manufacture, Engine, Machine or Device, or any improvement therein, not before known or used”, provided that the invention or discovery was deemed “sufficiently useful and important”.

It’s instructive to go back and understand what was meant by “Useful Arts.” According to the Sheridan's Dictionary of 1780, “Useful” meant “convenient, profitable to any end, conducive or helpful to any purpose;” and “Art” meant: “the power of doing something not taught by nature and instinct; . . . a trade; artfulness; skill; dexterity; cunning;”. It’s also interesting for us modern ears, to know that the original sense of “technology” was from the Greek “techné,” which simply meant “art, craft”, as opposed to “episteme,” “scientific knowledge, a system of understanding.” Indeed, “technology” was much broader than its current engineering-focused meaning; Sheridan defined "technical" as "belonging to the arts, not in common or popular use"; Webster in 1833 defined a “Technology”:  as “a treatise on the arts, and explanation of terms of art.”[1]

The intellectual property system framed in the Constitution, and enacted in the first of our Patent Laws, was elegant and sensical. Science (the world of pure ideas and systemic understanding of our world: episteme), was free to all people to advance. The work advancing science was protected through copyrighted works of scholarship, atlases, and other creative expressive, tangible works.

Applied knowledge (transforming ideas into useful arts, into tools and processes that acted in the world: techne), was protected by patents. And the breadth of useful arts was extremely wide: encompassing all that was useful in the real world and in commerce. “the power of doing something not taught by nature and instinct.”

This elegant scaffolding sufficed the US patent system for the better part of 200 years. Certain cases touched on the boundaries between abstract idea, episteme, and protectable useful art, techne. The Morse telegraph case is instructive. There, the Supreme Court denied Morse his super-broad claim 8 on “the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.”. The Court rejected this, saying “he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of the opinion that the claim is too broad, and not warranted by law.” While often cited as an early subject matter case, the Court invalidated the claim on what would now be termed Section 112 indefiniteness and lack of written description.

It’s also instructive to note that that same Court allowed Morse’s claim 5, which broadly claimed “the system of signs, consisting of dots and spaces, and horizontal lines, for numerals, letters, words or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.” A system of signs. But specifically applied in the real world, within telegraphy. Query whether this claim would survive Alice.

Section 101 patentability challenges of the 1970’s, in Benson and Flook, culminated in the Diamond v. Diehr decision of 1981, and the roughly contemporaneous Chakrabarty decision of 1980, set out an admirably broad ambit for patentability on the advent of the digital and biotechnological revolutions that have transformed our world these last 35 years. Coming as they did at the foundation of the Federal Circuit, these decisions reinforced a view that the US patent system was capable of broadly encompassing “anything under the sun that is made by man,” the Chakrabarty Court quoting the Senate Committee report on the 1952 Patent Act.

The Diehr Court noted that Section 101 simply provides “a general statement of the type of subject matter that is eligible for patent protection ‘subject to the conditions and requirements of this title.’” The more substantive requirements for whether a particular invention is novel (section 102) and nonobvious (section 103) stand “‘wholly apart from whether the invention falls into a category of statutory subject matter.’” Here, the Court was quoting the 1979 CCPA case In re Bergy, authored by Judge Rich, who as we know coauthored the Patent Act of 1952.

As Judge Rich underscored in Bergy, Section “101 was never intended to be a ‘standard of patentability’; the standards, or conditions as the statute calls them, are in § 102 and § 103.” This is consistent with the legislative history accompanying the 1952 act, which explains “[s]ection 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirements of this title.’(that is 102, 103 and 112).”

As we all now know, and like so many of the comments eloquently expressed today, that broad promise has been severely damaged. After the Alice, Prometheus and Myriad cases, Section 101 is being used with ferocious effect, by District Courts at the pleading stage, with little to any factual development, and by Patent examiners, in hundreds and thousands of cases, as a new, often insurmountable hurdle to patentability. Like the internet video of the raccoon washing cotton candy in water only to see it disappear, the courts and PTO often reduce proposed claims to a collection of quote “abstract” ideas, and then wash each of those away under the acid of the new 101 jurisprudence, leaving nothing patentable behind. All of this belies the purpose, structure and logic of our patent system.

Of course, every innovation is a set of abstract ideas given concrete application in the real world. Unfortunately, under current practice, Section 101 has become a destructive, rusted machete for an area of law that calls for sharp scalpels.

There seems to be something especially difficult for courts and the PTO in handling digital and biological innovations. It’s far easier today to get a patent by adding one more gear or lever to an 18^th century cuckoo clock, then trying to protect an elaborate coded new application on a smart phone.

The US is now falling behind Europe and China, in the protectability of these inventions. We have allowed the Supreme Court to craft our US industrial policy: as noted by at least some today, there is some mounting evidence that failure to protect these inventions is affecting early-stage funding and development. And may impose significant additional harms on a variety of industries competing in the global market

Absent a strong turn by the Federal Courts back to the Diehr and Chakrabarty vision of patentability, I would argue we probably do need a legislative adjustment, one that should be as elegant and brief as possible, in line with the adjustment in the 1952 Act that added a new, brief section 103 to “stabilize” existing jurisprudence about obviousness. We need to somehow stop the Courts and the USPTO from importing their own often hazy, subjective view of “abstractness” (often really just unbound, personal views of novelty, obviousness or distinctiveness) into the purposefully low Section 101 patentability threshold.

To address this situation through legislation, I suggest something along the lines of adding a straightforward sentence at the end of Section 101:

101. Inventions patentable. 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. For purposes of this section, it is irrelevant whether the invention or any of its claimed elements, is otherwise unpatentable under sections 102, 103 or 112.

I believe something this simple, or its equivalent, accompanied by clear legislative history, could help undo so much of the new troubling jurisprudence that imports these other conditions of patentability at the outset, and restore 101 to the minimal, simple threshold for inventions of the useful arts to which it was always intended.

Endnotes

[1] See, Oxford English Dictionary, Vol. V. 338, Vol. XVII 705 (2d ed. 1991); see also Noah Webster, Dictionary of the English Language 35 (11th ed. 1833).