“The Supreme Court has created a big problem and then made it worse with each successive decision…”Footnote 1
And what about ‘exceptions’ like natural laws and natural phenomena? Of course, these are universal…. But, for perspective, even gravity is not a natural law in Einsteinian theory, but a symptom of a curved universe. Einstein posited the speed of light as the only true natural constant. Thus, in context, equating the personalized medicinal effect of a human-created pharmaceutical in patients of different metabolic rates and genetic makeups with the speed of light (or even gravity) is only possible in a netherworld of undefined judicial insights.Footnote 2
Courts have long held that some kinds of inventions meeting the statutory requirements of being new, unobvious, and useful are nonetheless excluded from patent protection. These excluded inventions are categorized as natural phenomena, abstract ideas, and laws of nature (‘the judicial exceptions’). The scope and purpose of these categorical exclusions has never been clear.Footnote 3 Given this, it has been difficult to know how broadly to apply them. With the rise of new fields of technology, such as software and biotechnology, this difficulty has become acute, and judicial exceptions cases have become much more common, especially in the United States.
These cases reflect disagreement between the United States Supreme Court (USSC) and the US Federal CircuitFootnote 4 about what qualifies as a law of nature, natural phenomena, or abstract idea. In its most recent judicial exception decisions, the USSC has invalidated patent rights that would formerly have been upheld, overturning Federal Circuit jurisprudence. In Mayo, the USSC held that a patented method of calibrating the dosage of a human-created pharmaceutical in different patients was a law of nature but failed to explain what it meant by ‘law of nature’ or why this invention was a law of nature. In Alice Corp v CLS Bank International,Footnote 5 the USSC held a patented method of using a computer was an abstract idea but failed to explain what it meant by ‘abstract idea’ or why an invention involving a tangible computer was an abstract idea.
According to one former Federal Circuit Chief Judge, the USSC has created chaos in patent law.Footnote 6 Other Federal Circuit Judges, taking the instrumental view that patent law should be interpreted to promote invention, worry that “a crisis of patent law and medical invention may be upon us”Footnote 7 and that a “too restrictive test for patent eligibility … with respect to laws of nature (reflected in some of the language in Mayo) may discourage development and disclosure of new diagnostic and therapeutic methods.”Footnote 8 Given that patent law is enacted to promote innovation, these concerns are understandable.
Assume, for the sake of argument, that a broad scope of patent protection for new and unobvious inventions best promotes innovation. Then patent law should arguably be interpreted to provide this broad scope of patent protection. However, patent law must also be interpreted consistently with other, more fundamental, legal entitlements external to it. If a broad scope of patent protection conflicts with these more fundamental legal entitlements, then it may be necessary to limit patent protection despite the risk of impeding innovation. One such legal entitlement, more fundamental than property and contract rights as well as patent rights, is each person’s innate right to freedom as independence.
Within the scope of the right to freedom as independence, others may neither tell us what to do, nor force us to do it. For example, I cannot force you to contract with me. But I can, without your consent, acquire patent rights that somewhat resemble contract rights.Footnote 9 How can this acquisition coexist with your independence? Patent law is enacted to promote invention, but this acquisition—how it can coexist with independence—cannot be understood entirely instrumentally. To protect independence from encroachment by governments enacting patent legislation and granting patents, and private actors acquiring patents, patent rights may need to be limited even if this impedes innovation. Reconciling patent rights with independence involves more than instrumental considerations. And explaining how patent rights must be limited to coexist with independence can explain many judicial exception decisions.
Kant relates independence and property to one another, explaining how and when property can coexist with independence. Drawing from Kant, and from Arthur Ripstein’sFootnote 10 interpretation of Kant’s legal philosophy, I argue that while judicial exception doctrine may impede invention, patent protection unconstrained by judicial exception doctrine conflicts with independence. I do not here argue that independence should enjoy priority over instrumental or utilitarian concerns about promoting invention. Instead, I assume this and then show how, given this assumption, patent protection must be limited as it has been by the USSC judicial exception decisions.
This Paper has four parts. Part I outlines Kant’s framework for solving what he calls the most difficult problem of all, how acquiring something previously unowned, making it your property, can coexist with independence.Footnote 11 Under this framework, some objects may be property, provided they are acquired in a way that is consistent with independence, while other objects must never be property. Part II extends this framework to patent law, explaining why patent protection conflicts with independence unless what can be patented, and when it can be patented, is limited. Parts III and IV then explain how the most recent USSC judicial exception decisions limit patent protection to reconcile it with independence. Part IV also argues that, despite references to promoting innovation, the USSC, in its judicial exception decisions, does not appear to be trying to define the scope of the judicial exceptions to best promote invention.Footnote 12
I. The Kantian View of Rights
A. Innate Rights
Kant derives legality or right, the enforceable aspect of morality, from the idea of external freedom. Rights protect our external freedom to set and pursue our purposes free from interference by others. To be universalized, this freedom must be subject to reciprocal limits. These limits reconcile each person’s freedom with others’ freedom: a lawless freedom cannot be universalized since the lawless freedom of one person conflicts with another’s. For example, my freedom must be subject to limits prohibiting my interference with your person. These limits reconcile my freedom with your innate right against this interference. We enjoy equal freedom because this freedom is bounded by reciprocal limits. In this Paper, ‘freedom’ without qualification means external freedom externally limited in this way: the freedom enjoyed in a system of equal freedom, in which each person’s legally enforceable rights protect that person’s freedom from others’ interference. At an abstract level, rights, such as your innate right to your bodily powers, or acquired rights to property or under contract, are all derivable from this idea of equal freedom.
In a Kantian system of equal freedom, each person has an innate right to freedom as independence from being constrained by another’s choice, insofar as this freedom can coexist with the freedom of everyone else.Footnote 13 The coexistence of each person’s freedom with the freedom of all others is attainable by subjecting everyone to reciprocal limits, which they have a duty to respect, and which are coercively enforceable. Rights define legitimate instances of coercion: coercion is rightful, consistent with freedom, when it hinders a hindrance of freedom. For example, your independence authorizes coercion to hinder others from interfering with it. This is innate since no act is required to acquire it: your right to independence arises simply by virtue of your humanity. Your bodily powers are means you can rightfully use to set and pursue your ends or purposes. Independence includes your right against others interfering with these powers.
Independence extends only to setting and pursuing ends, not to accomplishing them. Say we race each other. You win the race without interfering with my bodily powers (e.g., without tripping me). Then your action is consistent with my independence, despite preventing me from winning the race. To think about freedom, we must abstract from our ends, considering only whether our freedoms can coexist. These concepts of freedom and independence can be extended to derive concepts of acquired rights such as contract and property rights.
B. Acquired Rights to Property and Under Contract
The means we can use to set and pursue our purposes are not limited to our bodily powers. We can also use external objects (objects external to one’s body). Independence does not extend to rights to external objects. Some external objects can only be acquired from another with their consent (bilaterally). Other external objects can be originally acquired (unilaterally).
Another’s choice to perform a specific deed can only be derived bilaterally, by contract. By contracting with you to wash your car, I transfer to you a right to my performance of that deed. You bilaterally acquire this right because we both willed this transfer. But you cannot acquire this right without my consent (unilaterally): this would conflict with my independence. And, even if it determines it is in the general interest, or my interest, that I be legally obliged to wash your car for a fee, the state cannot rightfully authorize you to acquire this right without my consent. This authorization would conflict with my independence.
The entitlement transferred by our contract was, prior to our contract, covered by my innate right to independence, and, after our contract, covered by your contract right. This entitlement was not, at any time, in others’ possession, available for their use. However, some external objects can be available for anyone’s use. Anyone may use an unowned thing as they choose, provided they do not infringe another’s independence. At least some of these external objects are rivalrous: to use them we must stop others from using them or interfering with our use. Land is rivalrous. Corporeal objects are rivalrous. If you are holding an apple, but do not own it, then I may not take it from you while you are holding it (this would infringe your independence), but I may take it and eat it after you put it down. Freedom of choice to use rivalrous external objects is impossible without the right to stop others from using them, or from interfering with our use.
Property is a solution to this problem.Footnote 14 If you own land then I may not use it, or enter onto it, without your permission, even when you are neither occupying nor using it. Your freedom extends to the choice to use the land: it is subject to your choice in general, and not merely insofar as you are occupying it. However, it is difficult to see how property can coexist with independence. Consider property in land. This can be transferred by contract. But there must have been a first acquirer who originally acquired previously unowned land.Footnote 15 Before land is originally acquired, anyone can use it. After land is originally acquired, others must not use it without the owner’s consent, even if they never consented to this acquisition. The owner has unilaterally placed them under new legal obligations. On its face, this seems inconsistent with independence. Nonetheless, this acquisition can coexist with independence because freedom requires unilateral acquisition to be possible.
We share a finite world containing external rivalrous objects. Our choices with respect to rivalrous objects may conflict: my choice to eat an apple conflicts with your choice to eat it. Unresolved, this conflict contravenes the idea of freedom since it will make your choice to use these objects subject to my choice to use them or to interfere with your use. Resolving this conflict requires that our choices to use external rivalrous objects be limitable, even without our consent. Since our freedom to use these objects consistent with others’ equal freedom must not be limited without our consent, we have a dilemma: limits on our choice seem both required by and inconsistent with freedom. Reason requires us to resolve this dilemma. We can do so by recognizing our duty to enter a civil condition (a state having the public institutions required to reconcile the equal freedom of a plurality of persons) in which, on behalf of each of us, public authorities can consent to reciprocal limits on our choice to use these objects so that freedom can be realized in our interaction vis-à-vis these objects. Public authorities can consent to this on our behalf because these limits on our choice are required for us to realize freedom of choice relative to using external rivalrous objects. Outside of a civil condition we can recognize we must unite our wills to consent to these reciprocal limits on freedom, but only public institutions can act omnilaterally,Footnote 16 consenting on behalf of all according to the idea of a united will.
Unilateral acquisition thus requires more than mere unilateral actions, such as picking an apple or fencing and cultivating land. Unilateral acquisition places all others under obligation. This requires a civil condition. To bind others from interfering with my control of the object, my unilateral acts must fall under public law authorizing my, or anyone else’s, acquisition of objects of that kind. In this way, my act of appropriation becomes a unilateral exercise of a state’s omnilateral power.Footnote 17 The state consents to my unilateral acquisition on behalf of everyone.
To permit another’s unilateral acquisition, freedom licenses states to consent, on our behalf, to limits on our choice to use external objects only when those external objects are rivalrous because only then does freedom require these limits. By contract, you can acquire my choice to perform a specific deed, but only with my consent. The state must not authorize you to acquire my choice to perform a specific deed without my consent. But given the united will presupposed to exist with respect to rivalrous external objects, and the duty of all to act in a manner consistent with the possibility of unilateral acquisition, the state may legislate conditions you can satisfy to unilaterally acquire rivalrous external things, thereby limiting others’ choice to use them. As we have a duty to consent to new limits on our choice to use these objects to enable them to be acquired, the state can legislatively authorize, consistent with independence, imposing these limits on our choice without our consent. But public law must not authorize you to acquire limits on others’ choice to use a non-rivalrous object, such as a mere concept, without their consent. Since there is no duty to consent to these limits, the state cannot rightfully impose them. Nor may public law authorize you to acquire something non-external, such as part of another’s body, without their consent, since this would conflict with independence. Finally, public law must not authorize you to acquire a rivalrous external object in the prior possession of another without their consent. Instead, at the time of unilateral acquisition, you must possess the rivalrous external thing being acquired, and this must be first possession, having priority in time relative to others’ possession. If another had prior possession of the object acquired at the time of your unilateral acquisition, then this acquisition would conflict with independence.
As compared to the instrumental view, this focus on equal freedom limits property and contracts by prioritizing independence. Viewed instrumentally, property and contract are justified if they tend to promote chosen ends (e.g., aggregate prosperity), and should be defined to best promote these ends. Independence can also be justified on instrumental grounds: independent people will often choose to engage in mutually beneficial transactions, which should often promote prosperity. Viewed instrumentally, independence, property, and contract may be placed on an equal footing, regarded merely as means for achieving ends, their relative importance depending only on the extent to which they achieve those ends. Viewed thus, property and contract need not be limited to coexist with independence. Instead, the freedoms protected by property, contract, and independence should be jointly optimized to promote aggregate prosperity or some other end. If independence conflicts with property or contract rights, aggregate prosperity might be best promoted by limiting independence to resolve this conflict.
An instrumental focus on promoting innovation will often be appropriate in patent law. Those with considerable experience in patent law, including many Federal Circuit Judges, may be more inclined than the more generalist USSC to adopt this instrumental focus to define a scope of patent protection that ends up conflicting with independence.
Focusing on the requirements that unilaterally acquirable objects be rivalrous, external, and in the acquirer’s first possession, Part II argues that patent protection unconstrained by USSC judicial exception jurisprudence conflicts with independence. Kant explains how independence can coexist with a state forcing us to respect others unilaterally acquiring previously unowned objects. Extending this explanation, I argue that for a state to have the rightful authority to grant a patent, the patent must cover only rivalrous external uses (the use of rivalrous external objects). Independence precludes granting patents for inventions not involving rivalrous external uses. Further, these uses must have been, at the relevant time, in the inventor’s first possession. Uses of kinds of rivalrous external material can be thought of as in the inventor’s first possession, even for specific rivalrous external material not in the inventor’s possession, when these uses are enabled by the inventive concept contributed by the inventor.
II. The Kantian View of Patent Law
A. Patent Law
An inventor of a useful machine, process, product, or composition of matter may apply to a government patent office for a patent. The invention must have been new and unobvious as of the priority date, which will be either the filing date of the patent application or the filing date of an earlier application to which it claims priority. If the patent office issues a patent, then the patent owner has a right to exclude others from making, using, or selling patented articles within that state, or importing them into that state, for the legislated term of the patent. The patent application and resulting patent must describe and claim the invention. A machine, process, product, or composition of matter having every feature of a claim infringes that claim and the patent if, during the patent term without the permission of the patent owner, it is made, used, or sold in the state that issued the patent.
If a claim covers more than the invention made and described, then the claim is invalid. The scope of an invention will depend on the state of the art: the invention as defined in each claim must be new and unobvious over the state of the art. Patents often include multiple claims of different scope: if broader claims are invalidated, narrower claims broad enough to cover useful technology may still survive.
Possession of the invention must be clear from the description of the application filed. Possession is as of the date the application was filed, or, if priority is claimed to an earlier application having an equivalent description, as of the earlier application’s filing date, which will be the later application’s priority date. Priority dates are important in patent law because it is as of a priority date that inventiveness is judged. Something that was inventive last week may not be inventive now if new knowledge has been published in the intervening period, becoming part of the state of the art.
A patent right somewhat resembles a property right. I can rightfully prevent others from using my land. Similarly, I can rightfully prevent others from using my patented technology, or at least recover damages for their use. But I may not be entitled to use my patented improvement of another’s patented invention. Say that using my patented improvement infringes your patent. Then neither of us may use my improvement without a license under the other’s patent.
Now contrast patents with contracts. Say that I disclose my unpatented invention to you under a contract, in which you agree not to use my invention without my permission. My contract right against you is like the patent right I would have had against you had I patented my invention, although this contract, unlike a patent, would govern only you, and not others. In both cases, I may be entitled to damages from your use of my invention without my permission. Yet my rights under our contract can be acquired only with your consent, bilaterally, whereas my patent rights require no such consent. Instead, I may unilaterally seek a patent by filing a patent application in a patent office. By granting the patent, the state authorizes me to enforce the patent against others who never consented to my acquiring the rights it defines.
Patents differ from property in how concepts of invention enable them. You can possess a specific machine without knowing how it operates or the structure it requires to operate. Unlike a property right to a specific thing, a patent covers making, using, selling, or importing any machine, product, composition of matter, or method of a particular kind, within the term and jurisdiction of the patent. To recognize or establish possession of a kind of machine, for example, we must grasp its concept, identifying the essential elements and their interaction required for the machine to operate as intended. For a patent to cover a kind of machine, this kind must be recognizable. Grasping the concept of the invention enables us to recognize this kind by recognizing the sameness of individual machines embodying this concept, distinguishing these machines from other kinds of machine. Understanding patent rights involves recognizing technologies as embodying concepts of invention defined in patent claims.
B. Bringing Patents Within the United Will Required for Property
Patents, like property in rivalrous external objects such as land, must be originally unilaterally acquired. As outlined in Part I, freedom requires property because property is a precondition for the freedom of choice to use rivalrous external objects. And because freedom requires property in rivalrous external objects to be possible, and unilateral acquisition is a precondition for this, freedom requires unilateral acquisition of rivalrous external objects to be possible. But inventions are non-rivalrous: provided you have the means to do so, your choice to implement your invention need not depend on whether others also implement your invention. For this reason, freedom does not require unilaterally acquirable patent rights.
Thus, freedom requires state recognition of some form of property rights but does not similarly require state recognition of patent rights. Indeed, freedom prohibits state recognition of patent rights that conflict with independence. This may seem to make patent rights impossible on the Kantian view. However, unilaterally acquirable patent rights can coexist with independence if the scope of these patent rights is limited to fall within the united will that makes property possible. This united will can consent on behalf of all to unilateral acquisition of rivalrous external objects. To see why this united will can consent to unilateral acquisition of patent rights covering uses of rivalrous external objects, it helps to reconceptualize property, specifically what is acquired when property is acquired.
A property right is not a relation between an owner and property. It is a relation of the owner to all others relative to the property. The owner has acquired a limit on the choice of all others to which they never consented: they may not use the property or interfere with the owner’s use of the property without the owner’s permission. Property in a rivalrous external object, say a corporeal external object such as a metal ingot, can be unilaterally acquired. And after that ingot has been unilaterally acquired, its owner can use it to make different things, all of which, absent some legal transfer, will continue to be owned by the owner.Footnote 18
Instead of covering specific matter or substance, a patent covers all machines, processes, products, or compositions of matter as defined in the claims of that patent, within its term and jurisdiction. But provided the patented machines, products, or compositions of matter are composed of external corporeal matter, then any infringement of the patent would necessarily involve a use of corporeal (rivalrous) external matter. Similarly, provided a patented process involves using external corporeal matter, then any infringement of the process patent would necessarily involve a use of external rivalrous matter. Like the property owner, the patent owner has acquired a limit on the choice of all others to use external rivalrous matter.Footnote 19
C. The United Will and Unilateral Acquisition of an Invention
Just as property cannot be unilaterally acquired by merely unilateral acts, such as picking an apple or fencing and cultivating land, patents cannot be unilaterally acquired by the merely unilateral act of inventing. A united will is needed to place all others under obligation. A state can maintain a patent system including a patent office for receiving applications, and omnilaterally approving and granting patents. But the patent office cannot, omnilaterally, limit others’ choice by issuing a patent unless everyone has a duty to consent to these limits on choice. By issuing a machine patent, the patent office limits the choice of others to make, use, or sell the machine claimed. This may be omnilateral since, on behalf of each of us, the united will can consent to limits on our choice to use the rivalrous external substance of which machines are made. That is, the united will, which governs our interaction relative to rivalrous external substances, may legitimize the state limiting our choice without our consent.
Without this idea of a united will, the public act of issuing patents would conflict with independence (it could not be omnilateral). Consenting to public law authorizing patent protection would contravene our independence. What we cannot consent to, the state cannot consent to on our behalf. Only the united will postulated to harmonize our uses of rivalrous external objects, and everyone’s duty to consent to new limits on our choice to use them, can legitimize the patent office issuing patents. The state lacks the rightful authority to issue patents for inventions not involving rivalrous external uses.
D. Unilateral Action, Omnilateral Authorization, and the Patent Application Process
To make an external corporeal object one’s property, one must publicly take control or possession of it. This requires signaling to others that this control is claimed. What counts as taking control must be defined in public law, and may differ in different states, but must have “priority in time to anyone else who wants to take control of the object.”Footnote 20
Unlike an original acquirer of property, a patent applicant seeks to take control of an invention instantiable in different external corporeal objects, existing at different times and places within the term and jurisdiction of the patent. The control claimed extends beyond any individual instance of the invention. Control in the sense of empirical possession of all instances of the invention is impossible. Possession of the invention is instead demonstrated in the application filed, which must enable a person of skill in the art to implement the invention as defined in the claims, and distinguish the invention from the state of the art.
Although a person can unilaterally signal the intention to take control of the invention by filing a patent application, for this unilateral act to bind others it must be approved by a suitable public authority, the patent office, which examines the claims before granting the patent. Often the patent office will either refuse the application entirely, usually on the grounds that the invention is known (‘anticipated’), obvious, or a mere judicial exception, or require the claims to be amended to address these or other rejections before granting the patent. In doing so, the patent office is acting omnilaterally: determining if the patent can coexist with independence by evaluating whether the inventor has first possession of the claimed invention.
E. First Possession
To coexist with independence, taking possession of an external corporeal object must have priority in time: it must be first possession. If you have prior possession of an apple, then my taking possession of this apple without your consent conflicts with your independence.
Similarly, taking control of an invention can only coexist with independence when it has priority in time. Hence patent law’s emphasis on the priority date of the claims. First possession entails possession. Consider empirical possession of an external corporeal object. When I am holding it, another taking it without my consent infringes my independence. Nothing analogous to this empirical possession is possible for an invention. It is intangible. I cannot hold it. But we can think of empirical possession of an external corporeal object as analogous to the possession of an invention in two distinct ways.
Possession is a condition of possible use of what is possessed. To show possession in this sense, a patent application must provide an enabling description. The validity of each claim must be individually judged based on this requirement. To be enabling relative to each claim, the description must enable a person of relevant skill to instantiate the invention as defined in that claim.
Then there is possession as control. Nothing analogous to holding a physical object in my hand is possible for an invention. I cannot possess an invention such that interference with the invention will interfere with my person, thus infringing my independence. If I choose to keep an invention secret, then others forcing me to disclose this invention would infringe my independence, but they can independently develop the invention consistent with my independence.
By obtaining a patent, I come to possess a specific limit on the choice of all others to make, use, or sell the invention claimed. But to do this, my patent application must not only enable others to implement the invention. It must also distinguish what, consistent with independence, I can acquire from what I cannot, by defining concepts distinguishing the invention from the state of the art. Both these requirements must be satisfied to establish a date of first possession. If a priority application provides an enabling description but lacks concepts required to distinguish the invention from the state of the art, then any later filed patent application claiming priority to the priority application, and any patent issuing on it, will not enjoy the priority application’s filing date as a priority date, which may invalidate the patent.Footnote 21
Say you file a patent application describing and claiming an invention, to try to take control of the invention claimed. To obtain the patent, your possession must be first. If the claimed invention was publicly known (anticipated) or obvious before the priority date of that claim, then your possession will not be first possession, and the claim will be invalid. Obviousness is judged from the perspective of the person of ordinary skill in the art, who is presumed to be knowledgeable but lack creativity. Anticipation and obviousness are typically at issue, both in the prosecution of patent applications before the patent office, and in court proceedings involving the issued patent. In infringement actions, defendants often succeed in invalidating at least some of the claims as anticipated or obvious. On the Kantian view, the taking control of the invention defined in these invalidated claims conflicted with independence: since the invention was already publicly available to others, the inventor lacked first possession.
These three requirements, that the patent right cover a rivalrous external use (a use of a rivalrous external object) in the first possession of the inventor, can explain the outcomes of all the recent USSC judicial exception decisions.
F. The USSC’s Judicial Exception Tests
Laws of nature, natural phenomena, and abstract ideas capture our understanding of how and why things work. They must be allowed some role in defining patent rights since, to be effective, patents must cover different ways of implementing inventions. These different implementations must all work. As the USSC has repeatedly observed in its judicial exception decisions, “too broad an interpretation of this exclusionary principle [the judicial exceptions] could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”Footnote 22
The USSC has defined tests for determining when inventions involving judicial exceptions can be patented. Under its Mayo test, patents involving a judicial exception, in that case a correlation the USSC called a law of nature, must be limited by other elements, or a combination of elements, sufficient to ensure that the claimed invention amounts to significantly more than the judicial exception itself.Footnote 23 Under its Alice test, computer-implementations of an abstract idea are not significantly more than the abstract idea itself, if they neither “purport to improve the functioning of the computer itself … [nor] effect an improvement in any other technology or technical field.”Footnote 24 Applying this test, other courts and the Patent Office have upheld patents covering abstract ideas programmed into computers that improve the functioning of computerized technologies.
How these USSC tests limit patentable subject matter to rivalrous external uses in the first possession of the inventor is illustrated in the following two examples. The first technology parallels many medical inventions while the second parallels many computer inventions.
G. First Possession of Inventions Relating to the Human Body
Say you invent a way of jumping up and down. It is new, unobvious, and very therapeutic. Jumping thus for a minute a week increases life expectancy by five years. You apply for a patent for your invention. Unfortunately, the state cannot, on the Kantian view, rightfully issue this patent. A patent would entitle you to stop others from jumping in the patented manner. But this jumping only involves means internal to them, their bodily powers. You could not, without their consent, acquire a limit on the choice of other people to use these means, since a state could not authorize this acquisition consistent with their independence. And your inventive concept that enables them to jump in the required manner is a non-rivalrous idea. Freedom does not license the state to grant a patent for your invention, since unilaterally acquiring something either non-rivalrous or non-external conflicts with independence. Your invention must be excluded from patent protection for the patent system to be rightful, even if this exclusion impedes invention.
Now say that your inventive method uses rope.Footnote 25 Ropes are rivalrous external objects. If the rope itself is new and unobvious, then it is patentable. Making the rope is a rivalrous external use (it is a use of the rivalrous external material from which the rope is made). Since this material is corporeal it is rivalrous: using it for one purpose conflicts with using it for other purposes. As it was enabled by the concept of your invention, this use may be thought of as in your first possession. Since this external rivalrous object, this external rivalrous use, can be thought of as in your first possession, granting you a patent for your invention falls within the rightful authority of the state.
But if the rope itself is known or obvious, it is difficult to say whether your inventive method can be patented. Indeed, the patentability of new and unobvious methods of using known or obvious rivalrous external objects, such as computers and steam engines, has been at issue in many judicial exception cases.Footnote 26 The inventiveness (the novelty and unobviousness) of methods of using known or obvious rivalrous external objects may cohere in the rivalrous external objects themselves, or only in the actions of the persons executing the methods. Only in the former case can a patent rightfully issue. If the inventiveness of a method lies only in the actions of the person executing it, then first possession is impossible.
For the jumping invention involving use of known or obvious rope, first possession is possible if this use of the rope is enabled by your inventive concept of its causal powers. The invention will then satisfy an extended version of the Alice test:Footnote 27 the use will improve the operation of the rope itself. First possession of this use is possible, as its possession was impossible without this inventive concept. Now say the invention fails the extended Alice test: use of known or obvious rope according to your invention does not improve the operation of the rope itself; an uninventive concept of the rope’s causal powers fully enables its use in your jumping invention. Any inventiveness lies exclusively in the rope user’s actions. Since an uninventive concept enables it, this use of the rope was previously publicly available. First possession is thus impossible (granting a patent for such an invention is like granting someone property in land despite others’ prior possession). Unless you have first possession of this use of known or obvious rope, granting the patent conflicts with independence. Thus far, the Kantian view corresponds to the Alice test.
Not so with the instrumental view. Whether a patented invention uses rivalrous external matter, such as the computer of the Alice test, let alone whether the inventor can have first possession of this use, seems irrelevant on this view. The question should be whether authorizing patent protection for the invention promotes innovation. It is difficult to see why the answer to this question would depend on the Alice test. On the Kantian view, however, patent rights, being unilaterally acquired, must cover only rivalrous external uses in the inventor’s first possession. And first possession is possible only when these rivalrous external uses are enabled by inventive concepts of causal powers of the kinds of rivalrous external objects used.
This jumping rope invention parallels some life science cases, such as Mayo, where the inventive concept partly related to what is internal to patients’ bodies, and partly related to an external rivalrous use (in Mayo, using a previously known drug). As discussed in Part IV, the patent at issue in Mayo could not be upheld because this external rivalrous use of the previously known drug was fully enabled by an uninventive concept of the drug’s causal powers. First possession of this external rivalrous use was thus impossible. Related issues arise in computer cases.
H. First Possession of Computer-Implemented Inventions
If an inventor invents a new, unobvious, and useful equation (or algorithm), and can describe the equation to fully enable its use, then recognizing patent protection for that equation might be expected to promote invention. However, on the Kantian view, since equations in the abstract are non-rivalrous, they cannot rightfully be patented. Rightful original unilateral acquisition of the patent would be impossible.
Aware that the equation itself cannot be patented, the inventor patents a method of, for each step of the equation, using a writing instrument to record a calculation on a recording medium. The patented invention now uses external corporeal objects: the writing instrument (a pen) and recording medium (paper). This attempt fails, however, as the invention does not cohere in these external corporeal objects: since this use of pen and paper is enabled by an uninventive concept of their causal powers, we cannot think of the inventor as having first possession of this use of these external corporeal objects. Applying the extended Alice test, the inventor has not improved the functioning of the pen and paper.
Many computer-implemented inventions involve computers making high-speed, complicated computations to solve equations that would otherwise be difficult or impractical to solve. However, unless the computer-implemented invention improves the functioning of technological systems comprising computers (based on an inventive concept of these systems’ causal powers), the inventor lacks first possession and issuing a patent cannot be rightful.
These three requirements, that the patent right cover a rivalrous external use in the first possession of the inventor, are used in Parts III and IV to explain the most recent USSC judicial exception decisions.
III. Methods of Operating Machines and the Judicial Exceptions
Several USSC judicial exception decisions cite an early English case: Neilson v Harford.Footnote 28 The patent, upheld by the court, covered a method for improving the operation of previously known blast furnaces. ‘Blast’ in blast furnace means air supplied to the furnace. Nielson discovered that blast furnace operating temperatures could be increased by pre-heating air supplied to the furnace. This method was found to be eligible for patent protection because it involved understanding and using causal aspects of furnace operation not previously understood. Prior to this invention, cold air was thought to produce a hotter furnace than hot air, because winter air produced a hotter furnace. In fact, this was due to the winter air’s dryness, not its coldness.Footnote 29 Neilson’s preheating of the air, contrary to the received wisdom at the time, improved blast furnace efficiency, reducing the amount of fuel needed to create a hot furnace. Inventiveness lay in an inventive concept of causal powers of the furnace itself.
In its decision, the Court noted the difficulty in distinguishing this invention from a principle “and that this first created in the minds of some of the court much difficulty”Footnote 30 as principles are not patentable. However, the Court ultimately determined “that the plaintiff does not merely claim a principle, but a machine embodying a principle.”Footnote 31 This distinction, which continues to be important in judicial exception decisions, is important in the Kantian view in determining if inventors can have first possession of their inventions so that a state can rightfully issue patents for these inventions.
Recall that for a state to issue a patent, omnilaterally, the united will, postulated to govern the choice of all relative to rivalrous external objects, must impose a duty on others to accept new limits on choice imposed by the patent. This united will can authorize a state to impose such a duty only when there is first possession of a rivalrous external use. For claims covering inventive methods of using previously known machines, the inventiveness—the novelty and unobviousness—of the method may cohere in the use of the machine itself, or only in the actions of the person executing the method. Only in the former case can a patent rightfully issue as only then does the united will apply. If the inventiveness of the method lies only in the actions of the person executing it, then first possession is impossible.
Thinking of choice in terms of concepts clarifies this. By means of our concepts of machines and their uses, we can choose to make or use these machines. If the machine itself is inventive, then the inventor may have first possession of the use of rivalrous external matter to make the machine. If the machine is known or obvious (uninventive), then first possession of this use of rivalrous external matter to make the machine is impossible, but first possession of a particular use of the machine may be possible. Say the inventive use of the previously known machine is enabled by an inventive concept of the machine’s causal powers. Then first possession of this use is possible, as possession of this use was impossible without this inventive concept. Applying the extended Alice test, the use of the previously known machine according to the invention improves its operation and is therefore eligible for patent protection.
Now say that the use is enabled by an uninventive concept of causal powers of a known machine. Any inventiveness lies exclusively in the actions of the user; it is not embodied in using the machine. Since an uninventive concept enabled this use of the machine, the inventor’s possession of this use lacks priority in time. Applying the extended Alice test, the use of the known machine according to the invention does not improve its operation and is therefore ineligible for patent protection. A state cannot rightfully issue a patent for this invention, regardless of the inventiveness or merit of the invention enabled by the concept of a user’s actions. Since this choice involves only the user’s bodily powers, it is not governed by a united will posited to enable our freedom of choice relative to rivalrous external objects.
Neilson’s inventive method cohered in causal properties of the furnace itself. Using the furnace in this way was a use of a rivalrous external thing, the furnace, enabled by Neilson’s inventive concept of causal relations underlying its operation. Due to everyone’s duty to consent to new limits on the choice to use furnaces, the state could grant Neilson the patent if he had first possession of the invention. Neilson had first possession of this use of the furnace as the method was individuated by the inventive features of the use of the furnace itself, and not merely inventive features of the actions of the person using the furnace. Applying the extended Alice test, the use of the blast furnace according to the invention improved its operation.
This distinction, sometimes difficult to draw, between inventiveness that lies in an inventive concept of causal powers of the user only, and inventiveness that lies in an inventive concept of causal powers of a machine (or other rivalrous external object), is important in the high proportion of USSC judicial exception decisions involving computer-implemented inventions. It explains the USSC’s tendency to invalidate computer patents. The Court’s latest word is Alice. While these cases are better considered in the order in which they were decided, they are more intelligible having in mind the Alice test: to be eligible for patent protection, a claimed invention comprising a computer-implemented abstract idea must improve the functioning of the computer itself or another area of technology. Restating the Alice test in Kantian terms, in a claimed system comprising a computer programed in an inventive (new, unobvious, and useful) way, the inventiveness must cohere in the system for the inventor to have first possession of this use of the rivalrous external matter of that system. And inventiveness will cohere in the system when the use of that system is enabled by an inventive concept of its causal powers.
A. The Most Recent USSC Computer Cases
Parker v FlookFootnote 32
The patent application at issue in Flook concerned an improved method of calculating an alarm limit for a catalytic conversion process. Six-to-three, the USSC held that this method was an abstract idea ineligible for patent protection. The only improvement lay in the formula for calculating the updated alarm limit. The formula was not rendered eligible for patent protection by the conventional post-solution activity of applying and limiting it to the catalytic conversion process. The catalytic conversion process itself was not changed: all that was changed was how the alarm limit was calculated. The result in Flook is consistent with the Kantian view and the Alice test.
The catalytic conversion process was enabled by a previously known concept of causal powers of the catalytic conversion equipment and materials. All the inventiveness lay in a person’s use of the equation to monitor the process. The inventiveness would not cohere in computers used to calculate using the equation, as their operation was not improved. As the calculation did not cohere in rivalrous external objects, first possession was impossible. Granting the patent would conflict with independence.
If, instead, the claims had recited additional elements regarding improved rivalrous external uses, then the claims might have been upheld by the USSC. Say the claims had defined a catalytic conversion method involving instruments for measuring variables representing operating conditions, and a computer controller for automatically stopping the catalytic process, or adjusting control variables, if an alarm limit was reached. Then improved operation of this catalytic conversion system would have been enabled by an inventive concept of causal powers governing the system’s operation. While mathematically expressed in the inventive equation for calculating the alarm limit, this concept would be embodied in the system itself. Because the method improved the operation of the catalytic conversion system itself, first possession would have been possible. These hypothetical modifications to the claims at issue in Flook bring them much closer to claims upheld by the USSC. Indeed, they would have brought the claimed invention within the Alice test: the use of the previously known catalytic conversion system according to the invention would have improved its operation and should therefore have been eligible for patent protection.
Diamond v DiehrFootnote 33
The patent application at issue in Diehr claimed a process for molding rubber into cured products. During the process, the temperature inside the mold was constantly measured. A computer repeatedly recalculated cure time using these measurements and an equation. The computer then signaled a device to open the mold when this cure time was complete. Five-to-four, the USSC held that the claims covered a process of curing rubber using a mold, and that when a claim recites applying a mathematical equation in a structure or process performing a function the patent laws were intended to protect, then that claim defines patentable subject matter.
This accords with the Kantian view and the Alice test. In Diehr, the process involved operating a mold to cure rubber. The process ended with opening the mold to produce a properly cured rubber product. This was an improvement over prior methods of operating molds to cure rubber, where the resulting rubber product was frequently either under or over cured. Even if the inventiveness of the process was solely provided by the equation, it cohered in the operation of the mold itself. This use of the mold was enabled by an inventive concept of the mold’s causal powers. The inventor had first possession of this use. Thus, the patent office could rightfully issue the patent.
The claimed concepts of both Flook and Diehr involved causal relationships understood to govern catalytic conversion and curing rubber respectively. In contrast, two of the four most recent USSC judicial exception decisions involved business concepts, leading to a split in the reasons given by the Court for invalidating the patent claims at issue.
Bilski v KapposFootnote 34
In Bilski, the USSC affirmed a rejection of a patent application for a method of hedging losses in one segment of the energy industry by investing in other segments of the energy industry. In doing so, the USSC departed from the Federal Circuit view that an inventive (new, unobvious, and useful) process was eligible for patent protection if and only if it satisfied the machine-or-transformation test, in that it was either tied to using a machine or transformed a particular article into a different state or thing.
The USSC held that, while helpful, the machine-or-transformation test was not the sole test for determining whether an inventive process was patentable. Justice Kennedy for the majority rejected Bilski’s claims for defining a mere abstract idea. Justice Stevens concurred that the claims defined an abstract idea but complained that the majority never explained what constitutes an unpatentable abstract idea. He noted that while the precedents cited by the Court refer to fundamental truths and phenomena of nature embodied in mathematical formulas as exemplars of abstract ideas, unlike these precedents, Bilski’s claims defined neither a fundamental truth, nor a phenomenon of nature embodied in a mathematical formula. He would instead have held that business methods are never patentable.
Because they defined the hedging method in the abstract, without reference to a computer, other machine, or other external rivalrous use,Footnote 35 Bilski’s claims could not satisfy the Alice test. On the Kantian view, the state could not rightfully issue the patent since the method fell outside the domain of the united will posited to enable our freedom of choice relative to rivalrous external objects. There would be no duty to accept the new limits on choice necessary for Bilski to acquire these patent rights.
Why the machine-or-transformation test is a helpful clue to patent eligibility without being dispositive is clear on the Kantian view. Machines and matter are corporeal. The test is helpful because it identifies at least some instances in which methods are defined in relation to a rivalrous object (corporeal objects are rivalrous). The test is not dispositive for several reasons. Most importantly in explaining other recent USSC judicial exception decisions, the test addresses neither the requirement that the object also be external, nor the requirement that the inventor have first possession. The Court faced these two scenarios in its next two judicial exception decisions: Mayo and Alice.
In Alice, the USSC invalidated claims defining a method for mediating settlement risk in financial transactions. In Bilski, the Court had rejected the machine-or-transformation test as dispositive. Alice provides an example where that test yields an outcome different from the USSC decision. As defined in the patent claims at issue, the method for mediating settlement risk required a computer to maintain, adjust, and reconcile records. Thus, the claims satisfied the machine-or-transformation test but were still invalidated for defining an abstract idea.
Justice Thomas for the Court declined to define ‘abstract idea,’ merely noting that there was no meaningful distinction between the risk hedging of Bilski and the intermediated settlement of Alice. Further, the generic computer implementation of this abstract idea failed to render it patent eligible. In concluding that the claims covered an abstract idea, despite also requiring involvement of the computer, Justice Thomas noted that the claimed improvements did not “purport to improve the functioning of the computer itself … [nor did] they effect an improvement in any other technology or technical field.”Footnote 36 Other courts and the Patent Office have inferred from this that abstract ideas programmed into computers that improve the functioning of the computer itself, or another area of technology, are patent eligible. On the Kantian view, the inventor of such an invention could have first possession of an improved use of the computer (or other technology), enabled by the inventor’s inventive concept of the computer’s (or other technology’s) powers. The method at issue in Alice involved a rivalrous external use since it used a computer. But it was enabled by an uninventive concept of the computer’s causal powers to perform calculations: it did not involve any concept of how to improve the operation of the computer. Without inventiveness cohering in the use of the computer enabled by an inventive concept of its causal powers, first possession of this method was impossible.
Reconciling Alice with Justice Stevens’ Concurrence in Bilski
The principles underlying Alice and Justice Stevens’ concurrence in Bilski seem different but are largely consistent. Justice Stevens’ comment that the patent claims at issue in Bilski covered nothing like a fundamental truth or a phenomenon of nature expressed in a mathematical formula, mesh with how Alice has been read to define when a computer configured in accordance with novel and unobvious abstract principles may be patentable. Principles governing, or understood to govern, the operation of computers or other machines are usually mathematical or causal. Reconfiguring a computer according to such principles may improve its operation. For example, mathematical compression algorithms can improve computer operation: operating a mobile phone to compress photographic image data such that the compressed image data can be transmitted within wireless bandwidth limitations might well be patentable, even if the phone’s hardware is unchanged. The methods at issue in Bilski and Alice were not enabled by concepts capturing an improved understanding of the causal forces underlying the operation of the computer, and thus could not improve the operation of the computer itself.Footnote 37 Without this improvement, any inventive contribution must lie in users’ actions, and not in computers configured to implement these methods. Thus, first possession of these uses of computers was impossible. Granting patents for such inventions could not be rightful.
It is difficult to see how financial innovations could improve the operation of a technological system comprising a computer. But even a technological application of an inventive concept that captures how a natural or technological system works (the causal powers inherent in such a system) may not be eligible for patent protection: as in Flook, a computer can be programmed based on such an inventive concept without improving its operation. In only two of the four most recent USSC judicial exception decisions did the inventions at issue involve inventive concepts of this kind. Both were life science cases. While, for the most part, the patent claims did not fare well, at least some survived, unlike the claims at issue in Bilski and Alice.
IV. Judicial Exceptions and Life Science Inventions
Certain autoimmune diseases can be treated using 6-thioguanine. As different patients metabolize 6-thioguanine at different rates, it can be difficult to determine appropriate dosages. For some patients, a conventional dosage may be toxically high, for others, ineffectively low. Prior to the invention at issue in Mayo, scientists knew that patient metabolite level correlated with the probability that dosages of 6-thioguanine could be toxic or ineffective but did not know how to determine dosage based on metabolite level. The patent at issue in Mayo described and claimed a target range of the metabolite correlated with dosage efficacy. For patient metabolite levels exceeding this target range, the patient’s 6-thioguanine dosage was likely toxic and should be reduced. For metabolite levels below this target range, the patient’s 6-thioguanine dosage was likely ineffective and should be increased.
In unanimously invalidating the claims, the USSC called this relationship a law of nature, and formulated the Mayo test: to be eligible for patent protection, claims covering a judicial exception must also recite other elements, or combination of elements, sufficient to ensure that the claimed invention amounts to significantly more than the judicial exception itself. Considering the elements claimed as an ordered combination, the Court determined that the claims failed to cover significantly more than the law of nature. The drug must be administered, and the resulting metabolite levels determined to make use of this law of nature. However, administering the drug and determining metabolite levels were previously known. All that was new was adjusting drug dosage based on metabolite levels relative to a target range. The combination of these elements and other elements of the claims amounted to no more than instructions to physicians to apply this law of nature when treating their patients.
Mayo is controversial. The Federal Circuit had upheld the claims partly because the method involved a transformation in the patient’s body to provide the metabolite, thus satisfying the machine-or-transformation test. Federal Circuit Judges, reluctantly following Mayo, have expressed concerns about its effects on invention in the field of diagnostic and therapeutic methods.Footnote 38 The then Federal Circuit Chief Judge commented that calling the dosage/metabolite relationship a law of nature “is only possible in a netherworld of undefined judicial insights.”Footnote 39 Whatever its defects, however, Mayo’s result seems correct on the Kantian view.
B. First Possession of Something External
On the Kantian view, unless a method uses a rivalrous external object and is enabled by an inventive concept of causal powers of that object, patent protection for the method conflicts with independence. Compare Mayo and Diehr. Both claim sets at issue covered calibrating a process inside a corporeal object: curing rubber in a mold in Diehr and modulating an immune response in a human body in Mayo. The claims at issue in Diehr were upheld since the governing equation was incorporated into the mold’s operation. This accords with the Kantian view. The invention lay in the rivalrous external use of the mold itself. First possession was possible because this use was enabled by an inventive concept of the mold’s causal powers. But a human body is not external. Using this body to calibrate its immune response is not a rivalrous external use. Only when this calibration is defined in terms of rivalrous external uses can it be patented consistent with independence.
The claims at issue in Mayo recited two external corporeal objects: the drug and the metabolite. Using the drug to treat autoimmune diseases was enabled by its previously known causal powers and thus not patentable. Adjusting drug dosage based on metabolite levels was also previously known, although the claimed target range was not. For the inventor to have first possession of this use of the drug and metabolite, the use must have been enabled by an inventive concept of their causal powers. In Neilson and Diehr, using the furnace and mold in ways enabled by inventive concepts of their causal powers improved their operation. But in Mayo, the operation of the drug and metabolite was unchanged. The method was enabled by a previously known concept of their causal powers. Any invention lay only in using the target range to monitor the patient’s metabolite levels and adjust drug dosage accordingly to improve the operation of the patient’s immune system. But use of a human body to calibrate its immune response, even in ways enabled by an inventive concept of its physiology, is not an external use. First possession of this use is impossible.
While easily explained on the Kantian view, Mayo defies explanation on the instrumental view. Indeed, while the USSC refers to instrumental concerns about promoting innovation in its judicial exception decisions, it is not clear what role these concerns play in these decisions, especially in Mayo.
C. Mayo and Instrumental Arguments for the Judicial Exceptions
Many USSC judicial exception decisions assert that laws of nature, natural phenomena, and abstract ideas are building blocks of innovation, the patenting of which may impede invention more than promote it.Footnote 40 These assertions are problematic for many reasons. First, it is not clear that inventions excluded from patent protection as judicial exceptions are building blocks of innovation. The USSC does not explain, for example, why the method for mediating settlement risk in financial transactions at issue in Alice, the hedging method at issue in Bilski, or the metabolite target range at issue in Mayo are building blocks of innovation.
In Mayo, the USSC appears to confuse using the metabolite target range as a clinical tool with using it as a tool or building block of innovation. This leads the Court to conflate impeding innovation with other possible negative consequences of patent protection. Justice Breyer for the Court notes but fails to respond to arguments “that a principle of law denying patent coverage here will interfere significantly with the ability of medical researchers to make valuable discoveries, particularly in the area of diagnostic research.”Footnote 41 Instead, he notes countervailing arguments that upholding these kinds of patent rights would interfere with physicians providing sound medical care.Footnote 42 While important, these countervailing arguments are irrelevant to innovation: providing patent protection for diagnostic methods could both promote innovation and interfere with physicians providing sound medical care. But Justice Breyer does not explicitly recognize this. Instead, after summarizing these arguments, he comments that he does not find these differences of opinion surprising as patent protection is a two edged sword that may impede innovation in some cases while promoting innovation in other cases.Footnote 43
The USSC also fails to explain why patent protection for building blocks of innovation is more likely to impede innovation than patents for other kinds of inventions. This is not self-evident. It could equally well be argued that developing and publishing inventions that are themselves building blocks of innovation is even more important to promote future invention than it is for other inventions, since other innovators are more likely to learn about these new building blocks of innovation. Of course, it is also possible that patents on these building blocks may impede innovation: the obligation to avoid infringing these patent rights could impede downstream invention. The relevant question on the instrumental view is whether patents on these building blocks are more likely to impede than promote innovation. If so, then for instrumental reasons it may make sense to deny them patent protection. To answer this question, the innovation-promoting effects of patents on building blocks of innovation should be compared to their innovation-impeding effects. This the USSC has consistently failed to do, either by directly considering these issues, or by drawing from others’ expertise in this area.
Indeed, while Mayo cites articles arguing that patent protection may sometimes impede innovation more than promote it, the USSC does not seem to be guided by these arguments or to be particularly focused on innovation. To support the assertion that extending patent protection to laws of nature may impede invention more than promote it, Mayo cites several articles, including one by Lemley, Risch, Sichelman, and Wagner.Footnote 44 However, Lemley et al. criticize the approach of categorically excluding laws of nature, natural phenomena, and abstract ideas from patent protection, arguing that this is likely to impede innovation by excluding from patent protection inventions that should be patentable and by including inventions that should not.Footnote 45 And while they published the article before Mayo was decided, they explicitly consider the facts at issue in Mayo, arguing that because the claim was so narrow it would not unduly impede future invention and should be upheld.Footnote 46 Mayo explicitly rejects this argument. In Mayo, the USSC refers to Flook, in which a narrowly defined mathematical formula was excluded from patent protection as a judicial exception, to point out that its cases “have not distinguished among different laws of nature according to whether or not the principles they embody are sufficiently narrow.”Footnote 47 That is, the USSC’s judgements about what claimed inventions should be excluded from patent protection as judicial exceptions have not depended on whether the claims are broad enough to interfere with future innovation.
After Mayo, many observers concluded that whatever USSC judicial exception jurisprudence is about, it is not about promoting innovation.Footnote 48
D. Association for Molecular Pathology v Myriad Genetics Inc Footnote 49
Myriad Genetics Inc. obtained several patents after discovering the precise loci and sequences of the human genes BRCA1 and BRCA2, and their correlation to elevated risks of breast cancer. The challenged claims covered isolated DNA corresponding to naturally occurring BRCA genes as well as BRCA complementary-DNA (cDNA) not found in nature. In nature, genes are transcribed to produce messenger RNA (mRNA). Using known techniques, mRNA can be reverse transcribed to yield cDNA comprising only the exons, and not the introns, of the naturally occurring BRCA genes. Exons are nucleotides that code for amino acids. Introns are nucleotides that do not.
The USSC held that “a naturally occurring DNA segment is a product of nature, and not patent eligible merely because it has been isolated.”Footnote 50 Myriad had discovered a useful gene but did not create it. The claims covering isolated DNA corresponding to naturally occurring BRCA genes were invalid. But the claims covering cDNA, which does not exist in nature, were upheld. This is notable because once a gene has been identified, synthesizing corresponding cDNA is straightforward. In its four most recent judicial exception decisions, only these claims were upheld by the USSC.
Distinguishing between discovery and invention is central to Myriad. The USSC’s finding, that Myriad had not created anything, is problematic. BRCA genes exist in nature, but Myriad arguably created the novel, unobvious, and very useful concepts of the BRCA genes. Objects (the BRCA genes themselves) corresponding to these concepts occur in nature, but the concepts do not. But mere concepts must not be patentable since they are non-rivalrous. One person’s choice to use a concept will not conflict with another’s except for uses involving rivalrous objects. Mere concepts can be freely used without limiting anyone’s choice to use them. We have no duty to act so that others can acquire them. Thus, the state may not limit our choice to use these concepts by granting a patent covering them. Only for concept-enabled uses that are rivalrous and external, such as using furnaces and rubber molds, do conflicting uses license the state to grant patents.
Isolated BRCA genes do not occur in nature, and, unlike BRCA genes in nature, can be used for genetic testing. Isolated BRCA genes are enabled by the novel, unobvious, and useful concepts of BRCA genes. This suggests that patents could rightfully issue for isolated BRCA genes, provided these genes are sufficiently individuated from BRCA genes in nature for first possession to be possible.Footnote 51
Myriad focuses on the significance of isolation. On the instrumental view, this focus is misguided. Whether isolated BRCA genes are sufficiently individuated from BRCA genes in nature is irrelevant to the question of whether patents on isolated genes, corresponding to non-isolated naturally occurring genes, will promote or impede invention. Myriad may discourage commercial research into genetic mutations correlated with diseases, and where such research occurs, encourage researchers to keep their discoveries secret for as long as possible, contrary to the purpose of patent law.Footnote 52 But on the Kantian view, whether the patents can be rightful depends on whether the claimed BRCA genes are sufficiently individuated from the naturally occurring genes for first possession to be possible. If the claimed BRCA genes are not sufficiently individuated from naturally occurring genes, then first possession of the isolated genes is impossible as the BRCA genes are not new (they previously existed in nature).
For corporeal natural phenomena such as genes, judicial exception doctrine merges with anticipation.Footnote 53 Existing in nature, corporeal natural phenomena lack novelty. Discovering a concept of a new kind of natural phenomena can enable uses of matter based on this concept (by, for example, isolating instances of that natural phenomena from other matter found in nature). But the discoverer of this concept cannot have first possession of uses of rivalrous external matter enabled by this concept unless the corporeal natural phenomena as claimed is significantly different from the corporeal natural phenomena as found in nature.
Complementary DNA does not occur in nature.Footnote 54 Myriad created the inventive cDNA variants of the BRCA genes. Thus, the USSC upheld the cDNA claims. This accords with the Kantian view. The use of rivalrous external materials to make this cDNA was enabled by the inventive concepts of the BRCA genes, together with publicly available knowledge of how to synthesize cDNA. Thus, first possession of this use was possible, making it possible to rightfully patent cDNA variants of the BRCA genes.
States enact patent laws and grant patents. Private actors acquire and enforce patents. In doing so, both states and private actors limit others’ freedom without their consent. How, if at all, must patent rights be limited to coexist with each person’s innate right to freedom as independence? In my experience as a patent attorney, this kind of question is seldom if ever asked by patent attorneys. I have argued here that trying to answer it can explain the judicial exceptions.
Kant provides concepts for bringing patent rights into relation with independence. Patents, like property, limit others’ freedom without their consent. Unilaterally acquiring property would conflict with independence except that freedom itself requires our choices to use rivalrous external objects to be harmonized. This licenses states to authorize unilateral acquisition by consenting on our behalf to limits on our choice to use the objects acquired. Without this license, patents could not rightfully issue. Under this license, only inventions involving rivalrous external uses can be patented, and then only when the inventor had first possession of these uses.
The four most recent USSC judicial exception decisions can all be explained on the Kantian view. In Bilski, Mayo, and Alice, the claims at issue could not have been upheld on this view. Bilski’s invention did not involve a rivalrous external use. The methods at issue in Alice and Mayo used rivalrous external objects, but these uses were enabled by previously known concepts of causal powers of these objects. These methods did not improve the functioning of the computer, drug, or metabolite. Using computers to perform the kind of calculations at issue in Alice was previously known, as was using 6-thioguanine in Mayo to treat autoimmune diseases and measuring metabolite levels to see how patients metabolized the 6-thioguanine. First possession was thus impossible.
In Myriad, the inventor had first possession of the use of rivalrous external materials to construct the cDNA. Thus, claims covering the new, unobvious, and useful cDNA were consistent with independence. They were upheld. In invalidating the other claims at issue in Myriad, the USSC focused on whether the isolated BRCA genes claimed were sufficiently individuated from naturally occurring BRCA genes to be patentable. This focus is relevant to first possession on the Kantian view. It is irrelevant to the instrumental view.
Patent law is enacted to promote invention. Whether states have succeeded may be assessed by determining if patent laws do, in fact, promote invention. But whether states can rightfully grant patents must be assessed by determining if first possession of patentable inventions is possible. If first possession is impossible, then patent law conflicts with independence, even when it promotes innovation. And if, to coexist with independence, patent protection must be limited by applying judicial exception doctrine, then, on the Kantian view, courts must do so, even at the price of impeding innovation.
I have argued that without judicial exception doctrine, patent law would conflict with independence. I have not tried to completely delimit the scope of rightful patent protection. Other aspects of patent law, including priority, full disclosure of the invention, and the requirements that the invention be new, unobvious, and useful to qualify for patent protection, are clearly aspects of first possession, required for unilaterally acquired patent rights to coexist with independence. Unlike the judicial exceptions, these features of patent law are uncontroversial, as they can all be explained on the instrumental view. But, in addition to the judicial exceptions, there may be other limits on patent protection, required for it to coexist with independence, at least some of which are hidden from the instrumental view.
Many thanks to Arthur Ripstein, Henry Ojambo, Jeff Cuthbert, Bita Amani, Kendrick Lo, and an anonymous reviewer of the CJLJ for helpful comments. All errors remain my own.