The English Origins of the Judicial Exceptions to 35 U.S.C. § 101

• Author: H. Jared Doster
• Position: H. Jared Doster is an associate in the IP department at Baker Botts L.L.P. in Houston, Texas. He can be reached at jared.doster@bakerbotts.com.
• Pages: 25-30

Published in Landslide® magazine, Volume 11, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

The

English Origins

of the

Judicial Exceptions

to 35 U.S.C.§ 101

By H. Jared Doster

The language in 35 U.S.C. § 101 has

existed, essentially unchanged, since

the U.S. Patent Act of 17931: “Whoever

invents or discovers any new and useful

process, machine, manufacture, or com-

position of matter, or any new and useful

improvement thereof, may obtain a pat-

ent therefor, subject to the conditions

and requirements of this title.”2

According to the U.S. Supreme Court, the judicial excep-

tions to this clause are about 50 years younger: “‘We have

long held that [35 U.S.C. § 101] contains an important implicit

exception: Laws of nature, natural phenomena, and abstract

ideas are not patentable.’ We have interpreted § 101 and its pre-

decessors in light of this exception for more than 150 years.”3

And, “these exceptions have dened the reach of the statute as

a matter of statutory stare decisis going back 150 years.”4

The Origin of the Judicial Exceptions

Since the start of the twentieth century, at least 10 Supreme

Court cases have directly addressed the issue of patent-eligi-

ble subject matter.5 Of these, only one case states, briey, the

origin of the judicial exceptions: “In reviewing earlier cases

applying the rule that a scientic principle cannot be patented,

the Court placed particular emphasis on the English case of

Neilson v. Harford, Web. Pat. Cases 295, 371 (1844).”6

The Supreme Court imported the judicial exceptions

entirely from English common law. Historically speaking,

this is not unusual. In the early years of the United States, the

Supreme Court imported English and British law to ll gaps

in U.S. case law. Even today, the Supreme Court looks occa-

sionally to old English law to trace the development of legal

principles to their origins before U.S. independence.7 The high

courts in Commonwealth countries have done the same.

The purpose of this article is to summarize, as a gen-

eral matter, what the English common law of patent-eligible

subject matter was at the time of the early United States. At

rst glance, one may ask why such a summary is relevant to

modern U.S. patent law. In In re Bilski, Judge Dyk in his con-

currence answers this question by reviewing the legislative

history of the U.S. Patent Act of 1793, which showed clearly

that Congress intended to adopt and codify most of the Brit-

ish patent regime.8 Therefore, it would not be a stretch to

imagine that Congress intended for the Court to turn to Brit-

ish common law for guidance when interpreting the Patent

Act of 1793. As far as I know, Judge Dyk’s concurrence in In

re Bilski is the only appellate court opinion that has framed

§ 101 jurisprudence through the historical lens of old English

and British patent law.9

“Manufactures” in the Statute of Monopolies

Due to perceived abuses by the Crown, the Parliament of

England10 passed in 1624 the Statute of Monopolies, which

banned all state-sanctioned monopolies except for limited-

time monopolies to inventors of “new manufactures.”

[A]ny declaration, before-mentioned, shall not extend to any

letters patent and grants of privilege for the term of fourteen

H. Jared Doster is an associate in the IP department at Baker Botts L.L.P. in Houston, Texas. He can be reached at jared.doster@bakerbotts.com.