Today, normative debates over restrictions on patent-eligibility are uniformly premised on a discrimination theory of patent-ineligibility: the restrictions are assumed to cause the patent regime as a whole to discriminate against, and thus grant weaker patent protection for, the affected technology. Under discrimination theory, the justification for a rule of patent ineligibility turns on whether there is a good reason to treat the affected technology differently and grant it only relatively weak protection. In contrast, this Article articulates a novel counteraction theory of patent-ineligibility. Counteraction theory adopts the default premise that all technologies merit roughly the same strength of patent protection, and it recognizes that, in some circumstances, a well-tailored restriction on patent-eligibility can be the most effective means of achieving that rough equality. The weakening of patent protection caused by restrictions on patent-eligibility can sometimes offset the unusually strong protection that is created by inherent, technology-specific biases in the patent doctrines other than patent-eligibility, including novelty, nonobviousness, and enablement. A restriction on the patent-eligibility of a technology can thus bring the strength of the patent protection available for the technology back closer to the norm of protection granted for all technologies.
A full account of counteraction theory entails an explanation of when and how the inherent, technology-specific biases in favor of strong protection can arise in the patent doctrines other than patent-eligibility, such as novelty, nonobviousness, and enablement. This Article focuses on one such explanation: the dematerialization of technology in today's knowledge-age economy has led to technology-specific regulatory inefficacy in these doctrines. Certain non-eligibility patent doctrines cannot do the work of regulating patent validity that we expect them to be able to do when they are brought to bear on certain intangible technologies, meaning that they sanction unusually strong protection for those technologies. Technology-specific regulatory inefficacy sets the stage for a counteraction-oriented justification of restrictions on patent-eligibility. The restrictions can counteract or neutralize the unusually strong protection created by the inefficacy of the non-eligibility doctrines, bringing the strength of the patent protection that is available for the affected technology back into closer alignment with the protection that is available for other technologies.
In addition to articulating counteraction theory and technology-specific regulatory inefficacy as theoretical possibilities, this Article examines the actual restrictions on patent-eligibility in two intangible technologies that are on the front lines of the ongoing battles over patent-eligible subject matter: diagnostic inferences and software. The Supreme Court has recently announced restrictions on the patent-eligibility of both technologies, and both restrictions are highly controversial under discrimination theory. However, the restrictions have a reasonable, although concededly imperfect, fit with the restrictions that can be justified under counteraction theory. In each technology, patent protection is unusually strong because certain non-eligibility doctrines fail to provide their expected validity-limiting regulation, and the Court's restriction on patent-eligibility works to counteract that strength.
TABLE OF CONTENTS INTRODUCTION I. THEORY: COUNTERACTION TO REGULATORY INEFFICACY A. The Patentability Conditions B. Patent-Eligibility and Discrimination Theory C. Counteraction Theory and Regulatory Inefficacy II. PROOF OF CONCEPT: DIAGNOSTIC INFERENCES AND MAYO A. Diagnostic Inferences Manipulate Meaningful Mental States B. Inherency and Patent Density 1. Inherency Usually Reduces Density 2. Technology-Specific Regulatory Inefficacy C. Overbreadth and Patent Generality 1. Overbreadth Usually Curbs Generality 2. Technology-Specific Regulatory Inefficacy D. Reconceptualizing Mayo III. PROOF OF CONCEPT: SOFTWARE AND ALICE A. Software Is a Purely Functional Technology B. Structure, Function, and Patent Generality 1. Means-Plus-Function Claiming and Written Description Usually Curb Generality 2. Technology-Specific Regulatory Inefficacy C. Reconceptualizing Alice IV. NEW DIRECTIONS A. Patent-Ineligibility Versus the Patentability Conditions B. A Grand Unified Doctrine of Patent-Ineligibility? C. Technology-Specific Patent Law D. Rethinking Intangibility as a Limit on Patent-Eligibility. CONCLUSION INTRODUCTION
From 2010 to 2014, the Supreme Court addressed the Section 101 doctrine of patent-ineligibility in an unprecedented four cases. Confronted with patents on technologies ranging from business methods (1) and software (2) to diagnostic inferences (3) and human genetics, (4) the Court invalidated the patents at issue in all four cases. Collectively, these opinions clearly signal the Court's intent to curtail the reach of patent-eligible subject matter.
A voluminous scholarly debate addresses the conditions under which restrictions on patent-eligibility like those announced by the Supreme Court have viable consequentialist justifications. (5) To date, what this Article calls the discrimination theory of patent-ineligibility has structured this debate: the goal of a restriction on patent-eligibility is to make the patent regime as a whole discriminate against the affected technology and provide relatively weak protection for it. (6) Discrimination theory focuses the normative debate on whether the affected technology merits a smaller quantum of protection than other technologies merit. Is the technology unusually likely to be a basic tool, meaning that patent protection would significantly retard future innovation? Is there less of a need for incentives to discover, commercialize, and disclose the technology, meaning that significant innovation and disclosure would persist absent patent protection? Although one focuses on the possibility of patent protection having large costs and the other on the possibility of patent protection having small benefits, both of these questions seek to justify restrictions on patent-eligibility by demonstrating that the net impact of ordinary, full-strength patents would be detrimental to overall social welfare and that weaker patents are therefore preferable.
This Article proposes and explores a different theory of the role that a restriction on patent-eligibility can play to shape optimal patent protection. (7) Patent-ineligibility is not the only doctrine that can implement a "substantive screen" regulating the outer limits of what constitutes a permissible patent interest (i.e., that reduces overall patent strength by selectively invalidating the most socially costly patents). (8) In fact, patent law's "patentability conditions"--that is, its validity doctrines other than patent-eligibility, including novelty, inherency, nonobviousness, overbreadth, and the rules of means-plus-function claiming--do the bulk of this regulatory work. One key, unrecognized fact about the patentability conditions is that they are sometimes unable to do the regulatory work that we expect them to do when they are brought to bear on certain technologies, leading to an inherent bias in favor of strong, socially costly patent protection in those technologies. (9) The counteraction theory of patent-ineligibility proposes that restrictions on patent-eligibility are sometimes the most effective means of offsetting such technology-specific biases in the patentability conditions and helping to equalize the strength of patent protection for all technologies. (10)
A focus on counteraction theory tees up questions about the condition precedent that creates the need for counteraction. Why are there technology-specific biases in the patentability conditions? That is, why are certain patentability conditions in certain technologies unable to do the work of invalidating costly patents that we expect them to do? Although there may be more than one answer to these questions, the answer on which this Article focuses is a doctrinal phenomenon that this Article terms technology-specific regulatory inefficacy. (11) A simple metaphor is helpful here to introduce the concept. The patentability conditions are legal tools for regulating patent validity. The physical tools in our basement toolboxes are only able to do the work that we expect them to be able to do when the technologies on which they are brought to bear have certain properties. For example, a crescent wrench can only do its work of tightening or loosening something when the something on which it is brought to bear is shaped like a nut. The central insight behind technology-specific regulatory inefficacy is that many of the patentability conditions are like conventional tools in that they, too, can only do their regulatory work when the claimed technologies have certain fundamental properties. They can only latch onto the claimed technologies and achieve the leverage required to regulate patent validity when the claimed technologies have certain fundamental properties. When technologies lack these fundamental properties, the patentability conditions are ineffective regulators, making the validity regulation for patents on those technologies lax and the resulting protection unusually strong. This is technology-specific regulatory inefficacy in a nutshell, and its action (making patents stronger on an arbitrary basis) is one reason why counteraction with a restriction on patent-eligibility (reducing patent strength) sometimes makes sense. When certain patentability conditions cannot regulate what constitutes a permissible patent interest or invalidate costly patents when they are brought to bear on certain technologies, patent-eligibility can step into the regulatory gap and do the needed work.