Monday, October 19, 2009

Debate exhaustion and exhiliration

I just posted on a short comment on a terrific debate on ScotusCast about the exhausation doctrine after the Supreme Court's Quanta v. LG decision. Worth listening to, a fabulous format for public edification and education, and almost nothing said in my post about patentable subject matter for a change.

Monday, October 12, 2009

Bilski, What is Patentable, and the Constitution

I recently filed an amicus brief in the pending Supreme Court case, Bilski v. Kappos, about whether business methods are patent eligible “inventions,” on behalf of eleven law professors and AARP (for whom I filed an amicus brief in the LabCorp v. Metabolite case about diagnostic methods). Although the Bilski brief focuses on business methods (and the legal category of unpatentable “abstract ideas”), it also explains how to draw the line between the patentable inventions and unpatentable science and nature. In addition, the brief explains why these concerns are of Constitutional stature, and not just questions of how far Congress has legislated and whether it has sought to extend the patent system beyond its historic contours.

As the brief argued, the patent system does not apply to science, nature, and abstract ideas, whether claimed “as such” (familiar terminology to Europeans under the EPC) or claimed without “invention in their application.” The reason for excluding science, nature, and ideas as such is based on historic beliefs (reflected in the Constitution) that such foundational information should be “free for all to use,” and that those who discover such information have a moral duty to freely disseminate it. The reason to prohibit claims lacking invention in the application (i.e., to go beyond claiming such public domain science, nature, and ideas as such) is that once such information is treated as public domain information, a patent without any additional inventive contribution (i.e., creative technological advance) would both improperly reward the scientific discovery with exclusive rights and overcompensate the discoverer for disclosing only what is supposed to be free for all to use. Stated differently, without “invention in the application,” there is simply no patent-eligible invention to patent; the claim is no more than a mere application of the public domain information, which may be new and a human creation but is not an invention.

Allowing patents for such claims would permit the public domain to be appropriated in a piecemeal fashion, rather than in one large bite (“as such”), but adds nothing to the store of technological knowledge (assuming again that the disclosed science itself is treated as if already known). Of course, scientists and others might -- absent patent protection for science, nature, and ideas “as such” or without additional invention -- choose to withhold such information from the public because they cannot turn it into their private property. But as Lord Camden stated over two Centuries ago, “[t]hey forget their Creator, as well as their fellow creatures, who wish to monopolize his noblest gifts and greatest benefits.” The law should neither encourage nor reward such withholding behaviors. (On alternative incentives and funding for scientific discovery, see below.) Whether one has the same, different, or no religious beliefs, patentable subject matter thus raises important moral concerns (and not just of utilitarian morality).

Because all countries prohibit patenting science, nature, and ideas as such, the approach suggested by the brief is quite similar to the approach in many other countries. This includes the “technical effect” approach of Europe, the Japanese requirement for “creation of technical ideasutilizing laws of nature,” and the requirement for industrial application reflected in, among other things, the TRIPS Agreement (recited along with novelty and inventive step patentability requirements, given the treaty’s notable lack of a definition for “invention”). The approach adopted by the brief, however, does not define the minimum threshold of what constitutes an invention (i.e., a creative technological advance), and countries may differ in where they set that threshold – as well as in regard to the qualitative degree of creativity that they believe would justify granting a patent (the subject of the inventive step requirement).

Instead, the brief sketches important and relevant patent law cases from the last two-plus centuries to show how the “invention in the application” test of eligibility has been applied, providing concrete examples of that minimum threshold. The “invention in the application” test thus provides analytic clarity regarding both the history and the theory of patent law in the U.S. and thus should be of help to the courts, the PTO, and the patent system as a whole. By articulating and analyzing the “invention in the application” test, the brief explains how patentable subject matter determinations differ from novelty, non-obviousness, and adequate disclosure patentability requirements, how it generates the “machine or transformation” precedents, and why those precedents establish a (possibly) necessary but (necessarily) insufficient condition for patent eligibility. The brief also explains why “preemption” of science, nature, and ideas is not the test of eligibility (which it would be if science, nature, and ideas were only prohibited from being claimed “as such”), but rather is the consequence of improperly claiming science, nature, and ideas without invention in the application (or any other meaningful limitation on claiming science, nature, and ideas “as such”).

The brief also argues that protecting the public domain of science, nature, and ideas is a constitutional, not just a legislative, requirement. Although originalism is always a difficult position, one need not be an originalist to believe that the value of protecting the public domain of science, nature, and ideas from encroachment is so important that it should continue to receive constitutional protection, and thus should not be subject to legislative override. The brief thus articulated three grounds (in less detail than in the amicus brief filed in the Court of Appeals below) for why the Constitution restricts legislative power, and explains why a broad interpretation of the statute (of Section 101 alone or in conjunction with Section 273) should not be adopted, as to do so would raise constitutional conflicts that should be avoided. These are: (1) that “Inventors” and “Discoveries” excludes science, nature, and ideas (which either are not human creations or are not the kinds of things that are properly subjected to private ownership); (2) that “useful Arts” imposes limits by requiring that patents be for technological advances, and eliminating the requirement for invention in the application extends the patent system beyond technology – however defined; and (3) that patents on the fundamental infrastructure of science, nature, and ideas impedes rather than “promote[s] the Progress of [both] Science and useful Arts.” Although I don’t expect the Court to rule on constitutional grounds, as Section 101 (alone or in conjunction with Section 273) can readily be construed to avoid violating such constitutional limits (and the brief argues that the statute should be interpreted to do so), I still hope the Court will reach the constitutional issues. It would be good for the Court at least to provide a clear statement on the meaning and limits (if any) of the Authors and Inventors Clause. Following Eldred, the statement in Graham that the Constitution limits legislative power may be widely viewed as repudiated dicta. A clear statement of the Constitution’s limits would potentially restrain Congress (and lobbyists) from testing those limits, as well as reinforce the constitutional policies behind those limits and provide guidance for future courts in assessing the constitutional validity of any future legislation that tests the limits.

Finally, in tardy response to comments of Anonymous and by Richard Aron Osman on my earlier post on the ACLU challenge to gene patents, I agree that we don’t want to “destroy this potential” for funding biotechnological advances, and that gene patents are an “easy target” whereas natural pharmaceuticals may make for harder cases. But the fact that hard cases may exist should not deter the courts from ruling on them, even if they may sometimes make mistakes. And permitting patents where there is “invention in the application” will preserve patents for some pharmaceuticals (and not just “minor follow-ups”), even if it denies patents for many pharmaceuticals that reflect no creative technological advance beyond the natural discovery. I also agree with Osman that we should be reluctant to prohibit patents on such medical advances without providing adequate funding for their scientific discovery. But I don’t think we are in serious danger of doing so if the prohibition on patenting science, nature, and ideas were made clearer. Rather, I think the justification for government funding would be easier to make (and the funds would become easier to obtain). Similarly, I think that personal incentives to engage in scientific (and other fundamental) discovery already exist, and that we don't need to provide patent incentives for them. But if we do need something more than already exists, there are better alternative than exclusive patents rights for providing them (e.g., prize funds, greater publicity and social recognition, more job security, etc.). Lastly, whether or not we wish to provide broad patent incentives for “pioneering” inventions is a complicated issue. The brief notes that some patents on non-inventive applications of science, nature, and ideas also may fail under Section 112 disclosure doctrines. But not all scientific, natural, and abstract discoveries are “pioneering.” For broadly applicable and important scientific discoveries, it is precisely their status as pioneering and foundational that suggests why (on utilitarian grounds) they should not be the subject of private exclusive rights. But even for patentable technological inventions, broad “pioneering” genus claims may sometimes do more harm than good, and I do not believe in granting broad patent rights to effectuate a "prospect theory" of the role of patents. The best discussion of this issue that I have seen is in Merges and Nelson’s On the Complex Economics of Patent Scope, 90 Colum. L. Rev. 839 (1990), which I believe is a strong repudiation of the prospect theory of granting broad patent rights in order to control the development of sequential innovation. But I’ll have more to say about pioneering inventions and genus and species claims soon, after our IP Clinic files an amicus brief in the Ariad v. Lilly written description case….