A Great Invisible Crashing: The Rise and Fall of Patent Eligibility Through Mayo v. Prometheus

Title 35 of the United States Code at Section 101 states that “[w]hoever 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.” Despite the apparent simplicity of the statute and its predecessors, the boundaries of patent eligibility dictated by the term “process” and the term “art” that it replaced, along with the terms “machine,” “manufacture” and “composition of matter,” have become increasingly uncertain over the course of the last two-hundred years. Recently, the lack of certainty has grown at an accelerated pace with advancements in technology and increasing sophistication of commercial business practices aimed at exploiting those advances. The Supreme Court has acknowledged the existence of the many lower court tests for patent eligibility that have evolved and even encouraged development of additional tests. Behind all of these tests, however, is a fundamental premise dating back to English common law, from which United States patent law originally derived, that limits patentable subject matter to physical application of naturally-occurring principle. In Mayo v. Prometheus, the Supreme Court effectively supplanted all previous criteria for patent eligibility with a requirement that any application of the laws of nature, naturally-occurring physical phenomena or abstract ideas be “inventive,” thereby hopelessly confusing satisfaction of 35 U.S.C. § 101 with requirements for patentability under other sections of the statute. Mayo, in short, annihilates the last vestiges of any rational attempt to partition patent eligibility from patentability. By failing to separately define “inventive” beyond its meaning under those other portions of the statute, the Supreme Court is severely undermining the predictability upon which the benefit of exclusive rights.