When the invention is an inventor: Revitalizing patentable subject matter to exclude unpredictable processes

Minnesota Law Review

Volumn 93, Issue 2, 2008, Pages 779-814

  Kohlhepp, Peter M ^a  

^a UNIVERSITY OF MINNESOTA LAW SCHOOL   (United States)

Author keywords

[No Author keywords available]

Indexed keywords

EID: 58249104115     PISSN: 00265535     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (272)

1. See I, ROBOT (20th Century Fox 2004).
2. See, e.g., JOHN R. KOZA ET AL., GENETIC PROGRAMMING III: DARWINIAN INVENTION AND PROBLEM SOLVING 5 (1999) ("[G]enetic programming has automatically created a computer program that is competitive with a human-produced result.");
3. Jonathon Keats, John Koza Has Built an Invention Machine, POPULAR SCI., May 2006, at 66, 72 (describing how a genetic algorithm independently and autonomously generated several different circuit designs that had been previously patented by human designers).
4. Patentable subject matter is defined as "any new and useful process, machine, [article of] manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101 (2000).
5. See, e.g., Diamond v. Chakrabarty, 447 U.S. 303, 308-09 (1980) (finding a live, human-made organism patentable under § 101);
6. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373-75 (Fed. Cir. 1998) (finding a method for conducting business to be patentable under § 101);
7. Michael A. Carrier, Cabining Intellectual Property Through a Property Paradigm, 54 DUKE L.J. 1, 4 (2004) ("The duration and scope of IP rights expand without limit.");
8. John R. Thomas, The Patenting of the Liberal Professions, 40 B.C. L. REV. 1139, 1160 (1999) ("[Subject-matter doctrine] seemingly bars few, if any, applications for patent.
9. After State Street, it is hardly an exaggeration to say that if you can name it, you can claim it.").
10. See In re Comiskey, 499 F.3d 1365, 1378 (Fed. Cir. 2007) (finding business methods that "depend for their operation on human intelligence alone" unpatentable under § 101);
11. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (finding an electrical signal unpatentable under § 101);
12. In re Bilski, 264 F. App'x 896, 897 (Fed. Cir. 2008) (ordering a hearing en banc to decide whether a particular business method is patentable under § 101).
13. Compare Appellants' Supplemental Brief at 11-12,
14. In re Bilski, No. 2007-1130 (Fed. Cir. Mar. 6, 2008)
15. (arguing that a risk-managing business method is part of the technological arts, and, alternatively, that the USPTO explicitly disclaimed a technological arts requirement as an exclusive test in Ex parte Lundgren, 76 U.S.P.Q.2d 1385, 1388 (Patent & Trademark Office Bd. of Patent Appeals & Interferences Sept. 28, 2005)), with Supplemental Brief of Appellee at 10,
16. In re Bilski, No. 2007-1130 (Fed. Cir. Mar. 6, 2008) ("[T]he technological focus of the Patent Act and the Patent Clause informs the outer limits of subject matter eligibility under section 101.").
17. See In re Bilski, 264 F. App'x at 897 (requesting the parties brief the issue of whether a statutory "process must result in a physical transformation of an article or be tied to a machine");
18. Supplemental Brief of Appellee, supra note 6, at 6-14 (arguing that a statutory process that does not effect a physical transformation must be "tied to a particular apparatus").
19. See In re Comiskey, 499 F.3d at 1378 ("It is thus clear that the present statute does not allow patents to be issued on particular business systems . . . that depend entirely on the use of mental processes.").
20. Inventions such as genetic algorithms are clearly part of the technological arts, must be performed in connection with a computer, and do not "depend entirely on the use of mental processes." See id. at 1376-79.
21. 35 U.S.C. §§ 154(a)(1)-(2) (2000).
22. JOHN LOCKE, THE SECOND TREATISE ON CIVIL GOVERNMENT 20 (Prometheus Books 1986) (1690);
23. see also DONALD S. CHISUM ET AL., PRINCIPLES OF PATENT LAW 39-41 (3d ed. 2004) (discussing an inventor's "inherent right to the fruits of her labor").
24. CHISUM ET AL., supra note 11, at 50 ("[T]he predominant justification for American intellectual property law has been .. . utilitarianism.").
25. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 167 (1989) (noting that the patent statute seeks a "careful balance between public right and private monopoly to promote certain creative activity");
26. Graham v. John Deere Co., 383 U.S. 1, 9 (1966) ('The patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge.").
27. But see Maverick Boat Co. v. Am. Marine Holdings, Inc., 418 F.3d 1186, 1191 (11th Cir. 2005) (noting that Congress passed the Vessel Hull Design Protection Act of 1998, Pub. L. No. 105-304, 112 Stat. 2860 (codified as amended at 17 U.S.C. § 1301 (2006)), in response to Bonito Boats to provide copyright protection to the owners of certain vessel hull designs).
28. U.S. CONST, art. I, § 8, cl. 8 (granting Congress the power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries").
29. See 35 U.S.C. § 101 (2000).
30. See id. §§ 101, 112.
31. See id. § 102.
32. See id. § 103.
33. See id. § 112.
34. See id. § 101.
35. See JAMES BESSEN & ROBERT M. HUNT, AN EMPIRICAL LOOK AT SOFTWARE PATENTS 17 (2004), http://www.researchoninnovation.org/swpat.pdf (noting an increased propensity to patent software).
36. See Richard S. Gruner, Intangible Inventions: Patentable Subject Matter for an Information Age, 35 LOY. L.A. L. REV. 355, 361 (2002) ("Ambiguous patent law standards can lead to excessive curtailment of activities under overly broad threats of patent enforcement.");
37. John A. Burtis, Comment, Towards a Rational Jurisprudence of Computer-Related Patentability in Light of In re Alappat, 79 MINN. L. REV. 1129, 1129 (1995) (noting that the marketplace makes business decisions based on the predicted protection available to technology).
38. Between 1978 and 1987, the USPTO issued 262 software patents. ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 154 (4th ed. 2007). Currently, the number of software patents issued exceeds 20,000 every year.
39. See JAMES BESSEN & ROBERT M. HUNT, THE SOFTWARE PATENT EXPERIMENT I (2004), http://www.researchoninnovation.org/softpat.pdf.
40. BESSEN & HUNT, supra note 23, at 5.
41. But see James Bessen & Robert M. Hunt, An Empirical Look at Software Patents, 16 J. ECON. & MGMT. STRATEGY 157, 180-83 (2007) (concluding that the increase in software patents is primarily the result of legal changes that make the patents easier to acquire).
42. The total software industry research and development increased from "$121 billion in 1988 to $164 billion in 1998 in 1996 dollars." BESSEN & HUNT, supra note 21, at 17 n.21.
43. Largest U.S. Corporations, FORTUNE, May 5, 2008, at F1.
44. See BESSEN & HUNT, supra note 21, at 16-17 (noting that the number of U.S. software patents granted increased at about sixteen percent per year, while industrial investment in software research and development grew at only 4.4 percent per year during the same period).
45. See Bessen & Hunt, supra note 25, at 181 ("Eliminating the subject matter exclusion and reducing the nonobviousness and enablement requirements may have made software patents much easier (less costly) to obtain.").
46. See U.S. CONST, art. I, § 8, cl. 8;
47. U.S. NAT'L COMM'N ON NEW T ECHNOLOGICAL USES OF COPYRIGHTED WORKS, FINAL REPORT OF THE NATIONAL COMMISSION ON NEW TECHNOLOGICAL USES OF COPYRIGHTED WORKS 35-36 (1978)
48. [hereinafter COPYRIGHTED WORKS REPORT].
49. Computer programs are copyrightable as long as they are recorded to a hard drive or some other tangible medium. See COPYRIGHTED WORKS REPORT, supra note 30, at 49.
50. See Donald S. Chisum, The Patentability of Algorithms, 47 U. PITT. L. REV. 959, 1015-16 (1986).
51. But see Pamela Samuelson, Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer Program-Related Inventions, 39 EMORY L.J. 1025, 1136 (1990) ("Many in the software industry believe copyright has a number of significant advantages over patents as a form of legal protection for programs.").
52. Thomas Caswell & Kimberly Van Amburg, Copyright Protection on the Internet, in E-COPYRIGHT LAW HANDBOOK 7-1, 7-8 (Laura Lee Stapleton ed., Supp. 2003) (noting that someone who independently creates an exact replica of another copyrighted work is also entitled to a copyright over that work).
53. Julie E. Cohen & Mark A. Lemley, Patent Scope and Innovation in the Software Industry, 89 CAL. L. REV. 1, 17 (2001) ("[V]irtually every court to consider the issue has concluded that there is a right to reverse engineer a copyrighted program for at least some purposes.").
54. 17 U.S.C. § 107 (2006).
55. In most cases, the copyright term is granted for the life of the author plus seventy years. Id. § 302(a). A patent, on the other hand, is enforceable for only twenty years from filing. 35 U.S.C. § 154(a)(2) (2000).
56. The author of a written work obtains a copyright simply by creation- no official registration is required. 17 U.S.C. § 201(a) (2006).
57. See Liza Vertinsky & Todd M. Rice, Thinking About Thinking Machines: Implications of Machine Inventors for Patent Law, 8 B.U. J. SCI. & TECH. L. 574, 581 (2002).
58. The increasing utility of artificial intelligence technologies is enabled in large part by increases in computer hardware processing power. See id. at 578 (noting that computer processing power has doubled every eighteen months for the past thirty years).
59. See id. at 576 (noting that new "thinking machines" reason by automating the trial and error learning process).
60. See Todd Shuster, Originality in Computer Programs and Expert Systems: Discerning the Limits of Protection Under Copyright Laws of France and the United States, 5 TRANSNAT'L LAW. 1, 76 (1992).
61. See Dana S. Rao, Note, Neural Networks: Here, There, and Everywhere-An Examination of Available Intellectual Property Protection for Neural Networks in Europe and the United States, 30 GEO. WASH. J. INT'L L. & ECON. 509, 509 (1997) (explaining that a neural network can generalize information to solve novel problems beyond the scope of the network's original training).
62. See KOZA ET AL., supra note 2, at 5-7 (describing cases where artificial intelligence has produced inventions that rival those of humans).
63. Id. at 3.
64. Id. at 19-23.
65. Id.
66. Id.
67. Id.
68. Id. at 22.
69. This design is often called the "best-so-far individual." Id.
70. Id. at 76 ("The genetic operation of mutation randomly alters one or more genes at particular locations along a preestablished fixed-size [algorithmic program].").
71. See, e.g., Method and Apparatus for Automatic Synthesis, Placement and Routing of Complex Structures, U.S. Patent No. 6,424,959 (filed June 17, 1999);
72. Method and Apparatus for Automated Design of Complex Structures Using Genetic Programming, U.S. Patent No. 6,360,191 (filed Jan. 5, 1999).
73. See Keats, supra note 2, at 72 (noting that on January 25, 2005, the USPTO granted a patent for a circuit designed by a genetic programming algorithm);
74. see also Apparatus for Improved General-Purpose PID and Non-PID Controllers, U.S. Patent No. 6,847,851 (filed July 12, 2002).
75. See Ray Kurzweil, The Virtual Thomas Edison, TIME, Dec. 4, 2000, at 65.
76. See Diesel Breeding: Looking Into Engines Helps Cross the Best with the Best, MECHANICAL ENGINEERING, Sept. 2002, at 53.
77. See Anne Eisenberg, When a Gizmo Can Invent a Gizmo, N.Y. TIMES, Nov. 25, 1999, at G9.
78. See Gary H. Anthes, Self-taught, COMPUTERWORLD, Feb. 6, 2006, at 28;
79. Peter Coffee, 'Exotic' Tools Go Mainstream, EWEEK, Feb. 6, 2006, at D1 (discussing the development of programs such as Discipulus, a genetic programming engine, and NeuralTools, a program utilizing neural network software).
80. John Koza, one of the pioneers of the genetic engineering technology, noted that "sometime [within] 10 years we ought to be able to play in the domain of real engineers." Anthes, supra note 56, at 28.
81. 35 U.S.C. § 101 (2000).
82. The present language is derived almost verbatim from the first Patent Act of 1793, with the only change being the substitution of the word "process" for the word "art."
83. See Diamond v. Chakrabarty, 447 U.S. 303, 308-09 (1980).
84. The Supreme Court defined a "process" as '"an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing."' Gottschalk v. Benson, 409 U.S. 63, 70 (1972)
85. (quoting Cochrane v. Deener, 94 U.S. 780, 787-88 (1876)).
86. Actual physical transformation, however, "is not an invariable requirement." AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352, 1358-59 (Fed. Cir. 1999).
87. Chakrabarty, 447 U.S. at 309
88. (citing S. REP. NO. 82-1979, at 5 (1952));
89. see also Sabrina Safrin, Chain Reaction: How Property Begets Property, 82 NOTRE DAME L. REV. 1917, 1919 (2007) ("Over the last several decades, knowledge, in particular, has undergone increased propertization . . . .").
90. See Diamond v. Diehr, 450 U.S. 175, 191-92 (1981) (finding computer programs to be patentable subject matter);
91. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998) (finding business methods to be patentable subject matter).
92. CHISUM ET AL., supra note 11, at 773.
93. The Federal Circuit expressly stated that "the question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to . . . but rather on the essential characteristics of the subject matter, in particular, its practical utility." State St., 149 F.3d at 1375.
94. MERGES & DUFFY, supra note 23, at 153-54.
95. Chakrabarty, 447 U.S. at 309;
96. see also Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) (holding claims unpatentable because the qualities claimed were "manifestations of laws of nature, free to all men and reserved exclusively to none");
97. O'Reilly v. Morse, 56 U.S. (15 How.) 61, 116 (1854) (finding Morse's claim for using electromagnetism to transfer intelligible signals directed at nonpatentable subject matter because "the discovery of a principle in natural philosophy or physical science, is not patentable").
98. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.");
99. Funk Bros., 333 U.S. at 130 ("The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none.");
100. see also Peter Yun-hyoung Lee, Inverting the Logic of Scientific Discovery: Applying Common Law Patentable Subject Matter Doctrine to Constrain Patents on Biotechnology Research Tools, 19 HARV. J.L. & TECH. 79, 101 (2005).
101. See Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1642-43 (2003).
102. Dan L. Burk & Mark A. Lemley, Inherency, 47 WM. & MARY L. REV. 371, 408 (2005);
103. see also Parker v. Flook, 437 U.S. 584, 593 n.15 (1978) ('The underlying notion is that a scientific principle, such as that expressed in respondent's algorithm, reveals a relationship that has always existed.").
104. Eileen M. Kane, Patent Ineligibility: Maintaining a Scientific Public Domain, 80 ST. JOHN'S L. REV. 519, 546 (2006).
105. See WILLIAM STALLINGS, COMPUTER ORGANIZATION & ARCHITECTURE: DESIGNING FOR PERFORMANCE 57 (7th ed. 2006) ("[I]nstead of rewiring the hardware for each new program, the programmer merely needs to supply a new set of control signals.").
106. Id. ("Each code is, in effect, an instruction, and part of the hardware interprets each instruction and generates control signals.").
107. Cf. MERGES & DUFFY, supra note 23, at 131;
108. Burtis, supra note 22, at 1157 (discussing the difficulty of classifying the mathematical algorithms integral to computer software as either "inventions" or "abstract ideas" because they "may be used to describe both discovered and invented subject matter").
109. See, e.g., Flook, 437 U.S. at 593-94 (defining the claimed mathematical algorithm as a law of nature).
110. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71 (1972) ("It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case." (emphasis added)).
111. See Diamond v. Diehr, 450 U.S. 175, 192 (1981) (holding that the inclusion of a mathematical formula or algorithm in an otherwise patentable invention does not render the invention unpatentable).
112. Id. at 191-92.
113. A patentable process is one that "transform[s] or reduc[es] an article to a different state or thing." Id. at 192.
114. Id. The Court foreshadowed this reasoning three years earlier, stating that "a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." Flook, 437 U.S. at 590.
115. Diehr, 450 U.S. at 191.
116. Even claims limiting application of a formula to a particular technology remained unpatentable, as did those that merely added insignificant post-solution activity to an algorithm. Id. at 192-93.
117. See Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1058 (Fed. Cir. 1992).
118. Id.
119. See In re Iwahashi, 888 F.2d 1370, 1375 (Fed. Cir. 1989) ("The fact that [the machine] operates according to an algorithm does not make it nonstatutory.");
120. In re Bernhart, 417 F.2d 1395, 1400 (C.C.P.A. 1969) ("[I]f a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program.").
121. See In re Alappat, 33 F.3d 1526, 1545 (1994) (holding that reprogramming a general-purpose computer creates a new "machine" under § 101).
122. The disputed claims covered a "rasterizer"-essentially a circuit board programmed to normalize data displayed on an oscilloscope screen, allowing the oscilloscope to display a smooth data curve line. See id. at 1537-39.
123. Id. at 1545 ("[A] general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instruction from program software.... In any case, a computer, like a rasterizer, is [sic] apparatus not mathematics.").
124. AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352, 1358-59 (Fed. Cir. 1999) (finding a process using a mathematical algorithm to automate differential billing of long-distance calls to be useful and therefore statutory subject matter). The scope of § 101 is "the same regardless of the form - machine or process-in which a particular claim is drafted." Id. at 1357.
125. Id.
126. (quoting In re Alappat, 33 F.3d at 1544).
127. See State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1374 (Fed. Cir. 1998).
128. See id. at 1373 ("Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not 'useful."').
129. See CHISUM ET AL., supra note 11, at 775 (noting that courts have extended patentable subject matter to cover virtually all controversial subject matter they have confronted, including living organisms, computer programs, and business methods).
130. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
131. Id. at 1354.
132. Id. (emphasis added).
133. See In re Comiskey, 499 F.3d 1365, 1377 (Fed. Cir. 2007) (finding claims unpatentable because "mental processes . . . standing alone are not patentable even if they have a practical application" (emphasis added)).
134. See id. at 1371 ("It is well established that '[t]he first door which must be opened on the difficult path to patentability is § 101."'
135. (quoting State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1372 n.2 (Fed. Cir. 1998))).
136. Two claims relating to "a method and system for mandatory arbitration involving legal documents, such as wills or contracts" recite unpatentable "mental steps" because they fail to "describe a process of manufacture or a process for the alteration of a composition of matter." In re Comiskey, 499 F.3d at 1379.
137. Id. at 1379-81.
138. The Court heard oral arguments for Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. in 2006. See 546 U.S. 975 (2005) (granting petition for writ of certiorari).
139. Justice Breyer dissented from the Court's subsequent dismissal of the writ as improvidently granted, noting that "[Federal Circuit precedent] does say that a process is patentable if it produces a 'useful, concrete, and tangible result.' But this Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary." Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 136 (2006) (Breyer, J., dissenting)
140. (citing State St., 149 F.3d at 1373).
141. See In re Bilski, 264 F. App'x. 896, 897 (Fed. Cir. 2008) (ordering an en banc rehearing asking, among other questions, what standard governs a statutory "process" under § 101).
142. See, e.g., Richard S. Gruner, In Search of the Undiscovered Country: The Challenge of Describing Patentable Subject Matter, 23 SANTA CLARA COMPUTER & HIGH TECH. L.J. 395, 400 (2007);
143. Sue Ann Mota, What Is Patentable Subject Matter? The Supreme Court Dismissed LabCorp v. Metabolite Laboratories, But the Issue Is Not Going Away, 11 MARQ. INTELL. PROP. L. REV. 181, 185-92 (2007) (reviewing court decisions rendered during the LabCorp litigation).
144. Cf. Vernon W. Ruttan, Usher and Schumpeter on Invention, Innovation, and Technological Change, 73 Q.J. ECON. 596, 600 (1959) (defining the act of inventing generally as any process requiring "an 'act of insight' going beyond the normal exercise of technical or professional skill").
145. Logical reasoning can be defined as "drawing inferences (conclusions) from some initial information (premises)" Kevin Emerson Collins, Propertizing Thought, 60 SMU L. REV. 317, 335 (2007).
146. "[A]t the end of the day, logical thinking is insufficient for invention and creativity." KOZA ET AL., supra note 2, at 11;
147. see also KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007) ("If a person of ordinary skill can implement a predictable variation [of a prior invention or group of prior inventions], [obviousness under § 103] likely bars its patentability.").
148. See U.S. Patent No. 6,360,191 (filed Jan. 5, 1999).
149. See id. col. 52.
150. See Vertinsky & Rice, supra note 38, at 601.
151. Erik S. Maurer, Note, An Economic Justification for a Broad Interpretation of Patentable Subject Matter, 95 NW. U. L. REV. 1057, 1058 (2001) ("[The] wealth-generating characteristics of innovation fundamentally justify a broad interpretation of patentable subject matter.").
152. See Gruner, supra note 22, at 359-60 (arguing for new patentable subject matter standards to accommodate intangible information processing advances that are "more and more the central features of new designs for products and processes that are highly useful").
153. See Thomas, supra note 4, at 1142 (arguing that patentable subject matter should be limited to "technology" because "technology presents a form of rational and systematic knowledge, oriented towards efficiency and capable of being assessed through objective criteria").
154. Before programmers developed creative algorithms, there was little risk of propertizing the inventive process because pure "mental steps" cannot be patented. See In re Comiskey, 499 F.3d 1365, 1377-78 (Fed. Cir. 2007) ("[M]ental processes-or processes of human thinking-standing alone are not patentable even if they have practical application.").
155. Similar intuitive objections have been raised to DNA sequence patents and patents covering biological life forms. See, e.g., Linda J. Demaine & Aaron Xavier Fellmeth, Reinventing the Double Helix: A Novel and Nonobvious Reconceptualization of the Biotechnology Patent, 55 STAN. L. REV. 303, 435 (2002) (discussing fears that granting private property rights in naturally occurring human DNA sequences, tissues, or biochemicals is akin to slavery, in that it prevents other individuals from commercializing such substances naturally existing in their own bodies).
156. See supra note 12 and accompanying text.
157. See Adam Mossoff, Rethinking the Development of Patents: An Intellectual History, 1550-1800, 52 HASTINGS L.J. 1255, 1315 (2001) (contending that Locke's labor theory of property contributed significantly to the growth and development of patent law).
158. Cf. Samuelson, supra note 32, at 1148 ("["I] nnovation in the software field has developed rapidly without the aid of patents.").
159. While the average amount of time that a first mover enjoys an effective monopoly has steadily declined, it remains significant, and the absolute size of sales per unit time of the effective monopoly is increasing. See Rajshree Agarwal & Michael Gort, First-Mover Advantage and the Speed of Competitive Entry, 1887-1986, 44 J.L. & ECON. 161, 173 (2001).
160. See Arti Kaur Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 NW. U. L. REV. 77, 79-80 (1999) (proposing to stimulate invention "not through stronger intellectual property rights, but through norms that militate against the securing of such rights");
161. see also ROBERT K. MERTON, THE SOCIOLOGY OF SCIENCE 273-75 (1973) (demonstrating a robust communalism among the scientific community that encourages the sharing of research results).
162. See Vertinsky & Rice, supra note 38, at 601 (making this distinction between the process of artificial invention and the products of the process).
163. See, e.g., U.S. Patent No. 6,360,191 abstract (filed Jan. 5, 1999) (describing "[a]n automated design process and apparatus for use in designing complex structures, such as circuits, to satisfy prespecified design goals, using genetic operations").
164. See Vertinsky & Rice, supra note 38, at 601.
165. See Peter Lee, Note, Patents, Paradigm Shifts, and Progress in Biomedical Science, 114 YALE L.J. 659, 663 n.10 (2004) (defining basic research as "upstream research aimed at elucidating the fundamental structure and properties of natural phenomena," and applied research as "downstream testing and experimental work that applies basic knowledge to solve practical problems").
166. Limiting the control an inventor has over the "derivative works" enables "subsequent innovators to work out new implementations." Burk & Lemley, supra note 66, at 1642-43;
167. see also Rai, supra note 114, at 80 ("[T]hose scientific research norms that have been most resistant to [broadened intellectual property rights] are more likely to achieve creation, disclosure, and development than full-blown intellectual property rights.");
168. Yunhyoung Lee, supra note 65, at 82 (contending that patents on basic scientific tools "disrupt the balance between freely available basic knowledge and privatized applied knowledge that is crucial to driving innovation").
169. See Yun-hyoung Lee, supra note 65, at 99-100.
170. For instance, the phrase "creating a structural design that satisfies prespecified design goals" may suggest the claim is limited to a specific application, but it is unlikely that genetic algorithms have any applications other than creating designs that satisfy prespecified design goals. See U.S. Patent No. 6,360,191 claim 1 (filed Jan. 5, 1999).
171. See Vertinsky & Rice, supra note 38, at 578-81 (outlining the economic advantages of artificial inventors).
172. See Michael A. Heller, The Tragedy of the Anticommons: Property in the Transition from Marx to Markets, 111 HARV. L. REV. 621, 623-24 (1998).
173. See, e.g., U.S. Patent No. 6,360,191 (filed Jan. 5, 1999) (granting a private exclusionary right to inventor John Koza covering a genetic algorithm by claiming the algorithm as computer software).
174. Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 SCI. 698, 698 (1998).
175. See Vertinsky & Rice, supra note 38, at 578-79.
176. See id. at 578.
177. Two factors combine to predict rapid development of creative algorithm technology in the absence of patent protection. First, conventional software developed rapidly even before courts were willing to grant it patent protection. Second, autonomous artificial invention offers design firms who develop the technology potentially enormous cost savings in research and development.
178. E.g., Cohen & Lemley, supra note 34, at 9 (noting that throughout the 1980s and early 1990s, when software itself was unpatentable, inventors could easily circumvent this barrier by claiming software inventions as the hardware "machines" they controlled).
179. See, e.g., Kristen Osenga, Ants, Elephant Guns, and Statutory Subject Matter, 39 ARIZ. ST. L.J. 1087, 1091-92 (2007);
180. Brief of Amicus Curiae American Intellectual Property Law Association, in Support of Appellants for Hearing En Banc at 10-13, In re Bilski, No. 2007-1130 (Fed. Cir. Mar. 6, 2008).
181. See MARK A. LEMLEY ET AL., SOFTWARE AND INTERNET LAW 180 (2006).
182. See Parker v. Flook, 437 U.S. 584, 593 (1978) ("The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.");
183. see also In re Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007);
184. In re Bergy, 596 F.2d 952, 960 (C.C.P.A. 1979) ('The first door which must be opened on the difficult path to patentability is § 101 . . . .").
185. CHISUM ET AL., supra note 11, at 772.
186. Although software and biotechnology-based inventions were originally considered to be at least on the fringe of patentable subject matter, if not beyond the realm thereof, two cases appear to have placed them securely within patentable subject matter. See Diamond v. Chakrabarty, 447 U.S. 303 (1980) (finding genetically engineered microorganisms to be patentable subject matter);
187. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998) (implying that software programs claimed as processes alone are patentable subject matter);
188. see also Cohen & Lemley, supra note 34, at 4 ("With some eighty thousand software patents already issued, the Federal Circuit endorsing patentability without qualification, and the Supreme Court assiduously avoiding the question, software patentability [under § 101] is a matter for the history books.").
189. The USPTO granted 61,104 patents in 1996 and 89,823 patents in 2006. U.S. PATENT & TRADEMARK OFFICE, A1-1 TECHNOLOGIES REPORT A1-1 (2008), http://www.uspto.gov/go/taf/ all-tech.pdf.
190. U.S. PATENT & TRADEMARK OFFICE, NUMBER OF UTILITY PATENT APPLICATIONS FILED IN THE UNITED STATES, BY COUNTRY OF ORIGIN CALENDAR YEAR 1965 TO PRESENT (2007), http://www.uspto.gov/go/taf/appl-yr.pdf.
191. The USPTO received 195,187 patent applications in 1996 compared with 425,967 in 2006. Id.
192. If, for instance, society were to come to a consensus that genetic sequences should not be private property, a heightened utility requirement would likely be insufficient to exclude all genetic sequence patents. A much more effective route would be for Congress to exercise its constitutional discretion to "promote the Progress of Science and useful Arts," U.S. CONST, art. I, § 8, cl. 8, by using targeted legislation to simply prohibit the patenting of genetic sequences.
193. See 35 U.S.C. § 287(c)(1) (2000) (limiting enforcement of medical procedure patents against doctors and other health providers);
194. see also MERGES & DUFFY, supra note 23, at 184-85.
195. See Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 YALE L.J. 177, 183 (1987) ("The scientific community rewards those who make original contributions to the common stock of knowledge by giving them professional recognition.").
196. See Robert P. Merges, Property Rights Theory and the Commons: The Case of Scientific Research, 13 SOC. PHIL. & POL'Y 145, 150 (1996).
197. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998).
198. See id. (noting that claimed subject matter "constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces 'a useful, concrete and tangible result"' (emphasis added)).
199. See id. ("Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not 'useful.'");
200. see also Thomas, supra note 4, at 1160 (noting that State Street "collapses the subject matter inquiry into another patentability requisite, that of utility").
201. See State St., 149 F.3d at 1373.
202. Id.;
203. see also AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352, 1358 (Fed. Cir. 1999) ("The notion of 'physical transformation' can be misunderstood. . . . [I]t is not an invariable requirement, but merely one example of how a mathematical algorithm may bring about a useful application.").
204. See AT&T Corp., 172 F.3d at 1361 (noting the proper focus of inquiry is "whether the algorithm-containing invention, as a whole, produces a tangible, useful, result").
205. In re Comiskey qualifies this statement, stating that "mental processes . . . standing alone are not patentable even if they have practical application." 499 F.3d 1365, 1377 (Fed. Cir. 2007). However, other abstract processes with practical applications-mathematical algorithms, for example - likely remain patentable under State Street's logic.
206. Thomas, supra note 4, at 1160.
207. See State St., 149 F.3d at 1372 ("The plain and unambiguous meaning of § 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented . . . .").
208. Indeed, State Street appears to restore a "process" under § 101 to its full literal scope, undoing Gottschalk v. Benson's exclusion of subject matter that was technically a "process."
209. See 409 U.S. 63, 71 (1972) (denying that a process for converting one form of a number into another form was a "process" under § 101).
210. State St., 149 F.3d at 1375 ("The question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to-process, machine, manufacture, or composition of matter-but rather on the essential characteristics of the subject matter, in particular, its practical utility." (footnote omitted)).
211. See, e.g., In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) ("[W]e do not consider [State Street] as holding that the four statutory categories are rendered irrelevant, non-limiting, or subsumed into an overarching question about patentable utility.").
212. See AT&T Corp., 172 F.3d at 1358 (noting that a physical transformation is merely "one example of how a mathematical algorithm may bring about a useful application").
213. A patentable "process" is '"an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing."' Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (quoting Cochrane v. Deener, 94 U.S. 780, 787-88 (1876)).
214. See, e.g., U.S. Patent No. 6,360,191 (filed Jan. 5, 1999) (claiming a genetic algorithm as such).
215. See 33 F.3d 1526, 1536 (Fed. Cir. 1994). Although the Federal Circuit later recognized that claiming software as a "machine" was not necessary, it certainly remains sufficient.
216. See AT&T Corp., 172 F.3d at 1358-59.
217. The Supreme Court adheres to the mantra that "anything under the sun made by man" is patentable. Diamond v. Diehr, 450 U.S. 175, 182 (1981) (citation omitted) (emphasis added). This phrase misfocuses the patentability inquiry on who made the invention rather than on the nature of the invention itself. By assuming that the inventive process ends once something is "made by man," the Court ignores the possibility that man could create an invention that itself is capable of creative invention.
218. This Note does not directly address the issue of whether the products of creative algorithms should be patentable. For discussion of a related issue, copyright protection for computer-generated creative works, see generally Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works: Is Anything New Since CONTU?, 106 HARV. L. REV. 977, 1042-72 (1993);
219. Samuelson, supra note 32, at 1142-53.
220. See, e.g., Parker v. Flook, 437 U.S. 584, 593 (1978) ("The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.").
221. See, e.g., Thomas, supra note 4, at 1143 (suggesting that patentability can be limited to the technological arts by requiring subject matter to have an "industrial application" and by restricting patentable inventions to "repeatable production or transformation of material objects").
222. See, e.g., Flook, 437 U.S. at 589-90, 595 (reasoning that the formula for computing an alarm limit was a natural law, therefore it was already known, and therefore the claimed invention was not a statutory "process"); Gottschalk v. Benson, 409 U.S. 63, 64, 68 (1972) (stating first that "[t]he question is whether the method described and claimed is a 'process' within the meaning of the Patent Act," and proceeding to determine that it was not because the algorithm for converting a binary coded decimal to a pure binary number was merely an abstract concept).
223. Certainly, common law cannot override statute. Because the language of § 101 states unequivocally that any "process, machine, manufacture, or composition of matter" is patentable subject matter, in the strictest sense, an unpatentable abstract idea, natural law, or natural phenomena cannot be a § 101 "process." See 35 U.S.C. § 101 (2000). Law exists as applied theory, however, and it makes little sense to analyze whether a claimed set of steps for converting light and carbon dioxide into sugar through photosynthesis is a "process" only to find it is not because it is a natural phenomena. Instead, for the sake of analytical clarity, courts should find photosynthesis unpatentable because it is a natural phenomenon, thereby reserving analysis of whether claimed steps are a "process" for subject matter that is not clearly an abstract idea, law of nature, or natural phenomena.
224. See, e.g., Benson, 409 U.S. at 64-65, 68, 70 (defining a patentable process as the "[transformation and reduction of an article 'to a different state or thing'" and then proceeding to determine that "programs to solve mathematical problems of converting one form of numerical representation to another" are not such "processes").
225. See Burk & Lemley, supra note 67, at 403.
226. See, e.g., Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) (finding a mixture of nitrogen-fixing bacteria unpatentable because the bacteria were claimed in their natural state - nothing was invented); O'Reilly v. Morse, 56 U.S. (15 How.) 61, 132 (1854) ("The mere discovery of a new element, or law, or principle of nature without any valuable application of it to the arts, is not the subject of a patent.").
227. See, e.g., Benson, 409 U.S. at 67.
228. See, e.g., Le Roy v. Tatham, 55 U.S. (14 How.) 155, 175 (1852) ("[A] principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.").
229. Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
230. U.S. CONST, art. I, § 8, cl. 8.
231. See Jonathan Kahn, What's the Use? Law and Authority in Patenting Human Genetic Material, 14 STAN. L. & POL'Y REV. 417, 435 (2003) ("The underlying rationale of patent law is to serve the public good by creating legal protections to promote useful and beneficial innovation.").
232. As discussed above, privatization of a resource necessary to enable future invention (here "inventive processes") raises the costs for others seeking to use that resource, thus chilling the innovation that depends on its use. See Heller & Eisenberg, supra note 125, at 698.
233. See id. (noting that as more private parties acquire exclusionary rights in a resource, the risk that it will be underexploited increases).
234. But see SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306, 1316 (Fed. Cir. 2004), vacated on reh'g en banc, 403 F.3d 1328 (Fed. Cir. 2005), superseded, 403 F.3d 1331 (Fed. Cir. 2005) (stating that patentable subject matter and the scope of claims are unrelated);
235. State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1377 (Fed. Cir. 1998) (asserting that the scope of patent claims should be limited by §§ 102, 103, and 112, not by § 101). Section 101, however, addresses subject matter whose nature is such that any claim covering that subject matter would be impermissibly broad. That is, the inquiry focuses on the inherent scope of the subject matter claimed, rather than the scope of the specific claim language.
236. See 35 U.S.C. § 101 (2000).
237. See supra notes 64-65 and accompanying text.
238. Other suggested mechanisms provide useful complements in the difficult task of identifying sufficiently "basic" scientific tools. See, e.g., Yunhyoung Lee, supra note 65, at 82 (discussing "upstream" versus "downstream" research tools);
239. cf. Rai, supra note 114, at 138-40 (proposing various strategies for using the law to reinforce scientific research norms that support maintaining a large public domain of biotechnology research tools). Other policy discussions center on, for instance, whether the "scientific model of research" or the "market model of innovation" is superior.
240. See Kahn, supra note 169, at 438-39.
241. Burk and Lemley suggest an "inherency" doctrine that renders unpatentable unchanged natural products. See Burk & Lemley, supra note 67, at 408. This formulation, however, is ill-suited to limit creative algorithms.
242. But see Burtis, supra note 22, at 1157 (emphasizing the importance of distinguishing between that which is discovered and invented to accurately interpret §101, and noting courts' continued difficulty in recognizing the distinction).
243. See Burk & Lemley, supra note 67, at 408;
244. Samuelson, supra note 32, at 1097 n.2 74 ("It quite obviously makes no sense to make the patentability of mathematical formulae turn on whether they are 'invented' or 'discovered,' for it is impossible to know for certain which is the case.").
245. Burk & Lemley, supra note 67, at 406-07.
246. See Diamond v. Diehr, 450 U.S. 175, 189 n.12 (1981) (cautioning against a reductionist argument which would "if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious").
247. For instance, courts could cite economic data showing the projected cost of licensing a tool should it become patented or statistical data showing current or projected usage rates of the tool at issue in a particular research field.
248. But see Allen Newell, Response: The Models Are Broken, The Models Are Broken!, 47 U. PITT. L. REV. 1023, 1025 (1986) ("[H]umans think by means of algorithms. Sequences of mental steps and algorithms are the same thing.").
249. Compare Gottschalk v. Benson, 409 U.S. 63, 72 (1972) (finding that the claimed mathematical algorithm had only the claimed use, and thus "the patent would wholly pre-empt the mathematical formula"), with AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352, 1358, 1360 (Fed. Cir. 1999) (explaining that applying a mathematical algorithm "in a practical manner to produce a useful result" is sufficient to show that the patent applicant has not "attempt[ed] to forestall its use in any other application").
250. 2, is by itself unpatentable.
251. The "mathematical algorithm" exception was at least in part based on the idea that pure mathematical algorithms are abstract ideas, and the Supreme Court has not held a patent invalid because it claimed an "abstract concept" since O'Reilly v. Morse. See 56 U.S. (15 How.) 61, 112-21 (1853);
252. see also Burk & Lemley, supra note 67, at 403-04.
253. See KOZA ET AL., supra note 2, at 77 ("The computer programs involved in genetic programming may be single-branch programs ... or multi-branch programs (containing one or more result-producing branches, automatically defined functions, automatically defined iterations, automatically defined loops, automatically defined recursions, or automatically defined stores).").
254. See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007) (holding that a patentable invention cannot result from a process that merely requires a person of ordinary skill in the art to "implement a predictable variation").
255. See Oskar Liivak, Maintaining Competition in Copying: Narrowing the Scope of Gene Patents, 41 U.C. DAVIS L. REV. 177, 179 (2007);
256. cf. Lee, supra note 118, at 663 n.10 (noting that the line between basic and applied research is increasingly blurry).
257. See, e.g., U.S. Patent No. 6,360,191 claim 1 (filed Jan. 5, 1999) (claiming "[a]n iterative computer-implemented process for creating a structural design that satisfies prespecified design goals").
258. See 35 U.S.C. § 101 (2000).
259. See KSR Int'l Co., 127 S. Ct. at 1740.
260. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (quoting Gottschalk v. Benson, 409 U.S. 63, 70 (1972)).
261. See Benson, 409 U.S. at 71.
262. This language is taken directly from a granted patent. See Method and Apparatus for Automated Design of Complex Structures Using Genetic Programming, U.S. Patent No. 6,360,191 claim 1 (filed Jan. 5, 1999).
263. See In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (recognizing the validity of "machine" claims consisting of software and a general purpose computer).
264. For instance, the first design may support 1010.3 lb. and weigh 98.2 lb., while the second design supports 1006.8 lb. and weighs 99.4 lb.
265. See Benson, 409 U.S. at 70 (defining a statutory "process").
266. See 35 U.S.C. § 112, ¶ 6 (2000) ("[S]uch claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.").
267. Diamond v. Diehr, 450 U.S. 175, 219 (1981) (Stevens, J., dissenting).
268. The inability to establish a cohesive, predictable regime governing patentable subject matter has been a longstanding weakness of patent law, particularly in the area of software patents. See Burtis, supra note 22, at 1129 ("Courts continue to struggle to develop a doctrine of patentable subject matter that is at once stable enough to provide predictability to the marketplace, which makes decisions based on the legal protection available to technology, while maintaining sufficient flexibility to keep abreast of ever-changing technological advancement.").
269. See Gruner, supra note 22, at 467 (arguing that patent standards should be altered to accommodate information-processing advances and to encourage intangible inventions).
270. Id. at 360.
271. See John M. Golden, Biotechnology, Technology, Policy, and Patentability: Natural Products and Invention in the American System, 50 EMORY L.J. 101, 112 (2001) (suggesting that, in the context of biotechnology, "the Patent and Trademark Office ('PTO') and courts should use the utility requirement to impose real, albeit not insurmountable, obstacles" in order to limit what is patented).
272. See, e.g., Katrina McClatchey, The European Patent Office and the European Patent: An Open Avenue for Biotechnologists and "Living Inventions", 2 OKLA. J.L. & TECH. 25, 8 (2004), http://www.okjolt.info/pdf/2004okjoltrev25.pdf (describing the "ordre public" concept: '"[i]nventions, the exploitation of which is not in conformity with the conventionally accepted standards of conduct pertaining to the culture inherent in European society and civilization are to be excluded from patentability as being contrary to morality'" (citation omitted)).