Chapter §3.06 Non-Eligible Subject Matter

• Jurisdiction: United States

§3.06 Non-Eligible Subject Matter

Unlike that of other countries,⁸⁵¹ the statutory patent law of the United States enumerates what is potentially patentable subject matter positively, meaning that 35 U.S.C. §101 states what is patent-eligible, but does not state what is not. In the U.S. patent framework, case law establishes the categories of subject matter that are excluded from patenting.

As examined in greater detail supra this chapter, judicial decisions have established that the following are not potentially patentable subject matter in the United States:

• laws of nature; ⁸⁵²

• natural phenomena; ⁸⁵³

• abstract ideas; ⁸⁵⁴

• unapplied mathematical algorithms; ⁸⁵⁵ and

• products of nature. ⁸⁵⁶

For example, the law of gravity, or fundamental laws of motion such as F (force) = M (mass) × A (acceleration), or the value of pi (approximately 3.14159), or the Pythagorean Theorem (a2+ b2 = c2), or Einstein's special theory of relativity (expressed by the relationship E = mc2), are not considered patentable. Applications of these fundamental laws and principles may be patentable if useful, novel, and nonobvious, but the underlying scientific truths are not. As the Supreme Court has explained, "[h]e who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end."⁸⁵⁷

Clearly the discovery of previously unrecognized scientific principles and fundamental laws of nature potentially bestows a great benefit on society. So why not reward the discoverers with patent protection, as an incentive for the discovery of even greater numbers of scientific principles and laws of nature? As a matter of public policy, the U.S. law on this point reflects the determination that such fundamental building blocks of science and technology must be left in the public domain, free for all to use and build on.

European patent lawyers view this as a dividing line between "discovering" and "inventing" and do not consider discoveries to be patentable.⁸⁵⁸ This position is at least facially inconsistent with the Intellectual Property Clause of the U.S. Constitution, however. The Constitution speaks of giving inventors exclusive rights for limited times to "their discoveries."⁸⁵⁹ Moreover, the U.S. Patent Act expressly defines "invention" as meaning "invention or discovery."⁸⁶⁰

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Notes:

^[851] See, e.g....