{"id":7807,"date":"2020-11-19T21:41:57","date_gmt":"2020-11-19T21:41:57","guid":{"rendered":"https:\/\/cpip.gmu.edu\/?p=7807"},"modified":"2026-02-03T20:18:14","modified_gmt":"2026-02-03T20:18:14","slug":"rethinking-%c2%a7-101-professor-talha-syed-takes-a-different-look-at-subject-matter-eligibility","status":"publish","type":"post","link":"https:\/\/blogs.uakron.edu\/ualawip\/2020\/11\/19\/rethinking-%c2%a7-101-professor-talha-syed-takes-a-different-look-at-subject-matter-eligibility\/","title":{"rendered":"[Archived Post] Rethinking \u00a7 101: Professor Talha Syed Takes a Different Look at Subject Matter Eligibility"},"content":{"rendered":"

The following post comes from Colin Kreutzer, a 2E at Scalia Law and a Research Assistant at CPIP.<\/em><\/strong><\/p>\n

\"shelvesBy Colin Kreutzer<\/strong><\/p>\n

When most people think of patentability requirements, they think of whether an invention has been \u201cdone before.\u201d Novelty and non-obviousness under 35 U.S.C. \u00a7\u00a7 102 and 103 are certainly key hurdles to obtaining a patent. But courts are often tied up over the more fundamental issues presented in \u00a7 101. That provision addresses patent eligibility itself\u2014whether an idea, new or not, falls within some class of inventions that qualify for patent protection.<\/p>\n

Section 101<\/a> of the Patent Act of 1952 says that a patent may be issued to \u201c[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter.\u201d It seems fairly straightforward. But the common law decisions, both pre- and post-1952, are riddled with exceptions and questions that the statute hasn\u2019t resolved on its own. How do we treat intangible notions, such as scientific principles or other abstract ideas? Is a business method a patentable process? What property rights can be granted to an inventor who discovers a fundamental law of nature? And should we treat the realm of pure mathematics as being fundamental to nature itself? As we move deeper into the information age, these questions aren\u2019t getting any simpler.<\/p>\n

In a new paper from CPIP\u2019s Thomas Edison Innovation Fellowship program entitled Owning Knowledge: A Unified Theory of Patent Eligibility<\/a><\/em>, Professor Talha Syed<\/a> of Berkeley Law argues that the confusion surrounding this issue is two-fold. First, it results from our failure to develop a functionality doctrine that can clearly distinguish technological applications of knowledge from other forms of knowledge. Second, he offers a root cause of this failure. There is a distracting preoccupation in patent law with \u201cphysicalism,\u201d that is, the notion that a patent is awarded for a thing<\/em> (tangible or not) rather than for knowledge of<\/em> that thing.<\/p>\n

In order to move forward, Prof. Syed states that we must first unwind the physicalist assumptions that are tangled up in our \u00a7 101 analyses. Only then can we develop a functionality doctrine free of those encumbrances. As he puts it, \u201c[r]econstructing eligibility doctrine requires, then, extricating incipient functionality concerns from the physicalist thicket, developing their independent basis, and properly following through on their doctrinal implications.\u201d<\/p>\n

On its face, when someone proposes that we fundamentally rethink a subject, it sounds as if they are calling for some kind of seismic shift. But Prof. Syed argues that his proposal merely provides a clearer perspective on a subject that has long needed clarity. Rather than requiring any major statutory reforms or total abandonment of our jurisprudence, he says that the \u201cdephysicalization\u201d of patent eligibility serves to better integrate our existing statutory and common law frameworks.<\/p>\n

How We Got Here<\/strong><\/p>\n

The questions mentioned above are not new. To understand the current state of things, Prof. Syed first details some of the cases that led us here, beginning with Neilson v. Harford, Le Roy v. Tatham, Boulton & Watt v. Bull<\/em>, among others.<\/p>\n

Neilson<\/em> is instructive. It was an 1841 English case that dealt with an improvement to an industrial process. The applicant\u2019s invention involved pre-heating air before it was injected it into an iron furnace. The Court of Exchequer expressed some doubts as to whether this intangible aspect of an industrial process was truly patentable. In the end, it only granted a patent because the inventive principle\u2014that the pre-heated air provides better ignition efficiency than cold air\u2014was embodied in a physical machine designed for that purpose. The patentee \u201cdoes not merely claim a principle, but a machine embodying a principle.\u201d<\/p>\n

Neilson<\/em> and the others influenced a number of cases in the 20th century American courts. Prof. Syed points to three variants of the general rationale. While a principle on its own is not patent eligible, it becomes so: (1) in an embodied application of the principle, (2) if it is delimited to a specific zone of industry, or (3) in an \u201cinventive\u201d mode of application.<\/p>\n

These variants illustrate a schism already appearing by the end of the 19th century as to why an \u201cabstract\u201d idea may be unpatentable. If \u201cabstract\u201d is taken in the dephysicalized sense, then the problem may only be cured by applying the idea in some physical form. Alternatively, it could be abstract in the sense that it is a pure unapplied principle. In this case, patent eligibility may not require a tangible form, but instead some delimitation to a specific industrial zone of applicability. Prof. Syed attributes what came next at least partly on a failure to recognize and fully develop these distinctions.<\/p>\n

Principles, in the abstract, were but one concern. The eligibility problem was compounded by similar questions about patent rights over natural phenomena. In the 1948 case of Funk Brothers Seed Co. v. Kalo Inoculant Co.<\/em>, the Supreme Court considered whether a set of naturally occurring bacterial strains\u2014unmodified except by their selective combination\u2014was a patentable invention. They answered \u201cno.\u201d Citing Le Roy<\/em>, the Funk Bros<\/em>. Court ruled<\/a> that \u201cpatents cannot issue for the discovery of the phenomena of nature. . . . The qualities of these bacteria, like the heat of the sun, . . . are part of the storehouse of knowledge of all men.\u201d Therefore, an invention based on a natural phenomenon must do more than rely upon \u201cthe handiwork of nature\u201d in order to become patentable.<\/p>\n

Then the waters got even muddier. At the crossroads of abstract principles and natural phenomena lies the fundamental concept of mathematics itself. In Gottschalk v. Benson,<\/em> the Court addressed an algorithm<\/a> for converting signals from one numerical form into a computer-friendly binary form. In Parker v. Flook<\/em>, it was an algorithm<\/a> for updating threshold alarm limits while monitoring certain chemical processes. In both cases, the Court held that the claimed invention was not a patentable process, but merely a mathematical formula which belonged to the \u201cbasic tools of scientific and technological work.\u201d<\/p>\n

However, both cases offered a different manner of distinguishing these abstract concepts from patentable inventions. Benson<\/em> mentioned, but did not require, that an eligible process should transform a particular article or require a particular machine (much later, the Federal Circuit imposed the \u201cmachine-or-transformation test\u201d as the sole test for eligibility, only to have it demoted to \u201cuseful tool\u201d by the Supreme Court). Flook<\/em>, on the other hand, looked for some \u201cinventive\u201d aspect that went beyond the algorithm itself.<\/p>\n

The whole story is too convoluted to do it justice here. The strength of these various eligibility bars has fluctuated over the years. But through these cases and more, we arrived at the modern two-part test under Mayo Collab. Svcs v. Prometheus Labs, Ass\u2019n for Molecular Pathology, Inc. v. Myriad Genetics, <\/em>and Alice Corp. v. CLS Bank<\/em>.<\/p>\n

Quoting Alice<\/a><\/em>, Prof. Syed lays out the test as:<\/p>\n

(1) Step 1: First, we ask \u201cwhether the claims at issue are directed to\u201d a law of nature, natural phenomenon, or abstract idea.(2) Step 2: If so, \u201cwe then ask, \u2018what else is there in the claims before us,\u2019\u201d considering \u201cthe elements of each claim both individually and \u2018as an ordered combination\u2019 to determine whether the additional elements \u2018transform the nature of the claim\u2019 into a patent-eligible application.\u201d Step two of this analysis is \u201ca search for an \u2018inventive concept.\u2019\u201d<\/div>\n

Critique of the Modern Test, and a New Proposal<\/strong><\/p>\n

Prof. Syed cites a fundamental disconnect in this test between its \u201cwhy\u201d and \u201chow,\u201d that is, why an invention is ineligible at all (claiming \u201cbasic building blocks\u201d of scientific and technological work) and how it may become eligible (by containing an \u201cinventive concept in application\u201d). He asks, \u201c[i]f the reason certain spaces of knowledge are ineligible is because they are \u2018basic,\u2019 then why doesn\u2019t delimiting the claims to a zone of \u2018application\u2019 suffice for eligibility?\u201d<\/p>\n

Prof. Syed says that at each stage of our \u00a7 101 development, courts have touched on proper functionality issues only to leave them obscured by physicalist notions. He moves to recast the three exceptions as \u201claws of nature, products of nature, and abstract formulas.\u201d More importantly, he insists that when discussing eligible categories or their exceptions, we preface them with the phrase \u201cknowledge of.\u201d So, knowledge of a law of nature can include discovered knowledge of some natural process. To analyze whether that knowledge<\/em> should be patent-eligible, we should focus on the functional application of that knowledge. The inventor must go from \u201cknowing that\u201d to \u201cknowing how.\u201d<\/p>\n

Prof. Syed uses Neilson<\/em> as an example to distinguish between understanding (having basic knowledge) and intervening (having applied knowledge). A claim to \u201c[k]nowledge of the principle that heated air promotes ignition better than cold\u201d is not patent eligible. But why? Not because it is an abstract idea, but because it claims the sheer knowledge that some process exists rather than knowledge of how to do something with it. This may not seem like a huge difference from the analysis we have now in the Alice\/Mayo<\/em> test. It isn\u2019t. But it might arguably be a clearer way of looking at things.<\/p>\n

Prof. Syed\u2019s version of the Alice<\/em> framework would ask, at step one, whether the claim seeks to cover knowledge of a law of nature, product of nature, or abstract formula. If so, then step two asks whether the claim delimits the ambit of its coverage to a zone of practical application. Finally, he urges (as others have) that the \u00a7 101 analysis be kept separate from analyses of substantive issues under \u00a7\u00a7 102 and 103: \u201cclaims should be truly evaluated \u2018as a whole\u2019 so that, for instance, a claim whose delimited application is obvious, but which also involves a nonobvious basic contribution, should pass matter under \u00a7 103 just as easily as one whose delimited application is itself nonobvious.\u201d<\/p>\n

Conclusion: Reconstructing \u00a7 101<\/strong><\/p>\n

Taking these considerations, Prof. Syed reconstructs \u00a7 101 into three patentability requirements for \u201cinventions\u201d or \u201cdiscoveries\u201d in the \u201cuseful arts\u201d:<\/p>\n

(1) Such \u201cinventions\u201d or \u201cdiscoveries\u201d must be conceived in a thoroughly dephysicalized way, as spaces of \u201cknowledge of<\/em>\u201d a \u201cprocess, machine, manufacture, or composition of matter.\u201d(2) Such spaces of knowledge must be spaces of \u201cuseful\u201d\u2014i.e.<\/em>, applied or functional<\/em>\u2014knowledge.(3) Finally, such candidate functional spaces of knowledge <\/em>still need to satisfy the substantive requirements laid out in the rest of the statute to qualify for protection.<\/p>\n<\/div>\n

Prof. Syed further recasts the statutory categories of subject matter eligibility. Where the \u201cprocess, machine, manufacture, or composition of matter\u201d comprises one intangible process category and three tangible product categories, his version is the opposite. There are three distinct process categories and one category for knowledge of physical things:<\/p>\n

(1) \u201cKnowledge of\u201d a way of doing something (so-called \u201cfunctional\u201d claims)(2) \u201cKnowledge of\u201d some thing, its structure, and at least one property (\u201cproduct\u201d claims)(3) \u201cKnowledge of\u201d a way of making something (method-of-making process patents)<\/p>\n

(4) \u201cKnowledge of\u201d a way of using something (method-of-use process patents)<\/p>\n<\/div>\n

This reconstruction reflects the two fundamental concepts of Prof. Syed\u2019s paper\u2014physicalism and functionality. In order to see the latter clearly, one must abandon the former. But Prof. Syed says that\u2019s easier said than done: \u201cWhat gives physicalism its lasting power in patents\u2014what makes the spell linger\u2014is, in fact, precisely functionality: it is precisely because patents properly obtain only in spaces of functional <\/em>knowledge, or knowing how to do <\/em>something, that it becomes easy to forget that they nevertheless still only obtain in spaces of functional knowledge<\/em>, or knowing <\/em>how to do something.\u201d That could help explain why courts have long struggled with this deceptively complicated subject.<\/p>\n

To read the paper, please click here<\/a>.<\/p>\n","protected":false},"excerpt":{"rendered":"

The following post comes from Colin Kreutzer, a 2E at Scalia Law and a Research Assistant at CPIP. By Colin Kreutzer When most people think of patentability requirements, they think of whether an invention has been \u201cdone before.\u201d Novelty and non-obviousness under 35 U.S.C. \u00a7\u00a7 102 and 103 are certainly key hurdles to obtaining a […]<\/p>\n","protected":false},"author":3627,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[35,38],"tags":[1071,1104,1304,1417,1428],"class_list":["post-7807","post","type-post","status-publish","format-standard","hentry","category-patent-law","category-patent-theory","tag-patent-eligibility","tag-patentability","tag-section-101","tag-supreme-court","tag-talha-syed"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7807","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/users\/3627"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/comments?post=7807"}],"version-history":[{"count":1,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7807\/revisions"}],"predecessor-version":[{"id":15652,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7807\/revisions\/15652"}],"wp:attachment":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/media?parent=7807"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/categories?post=7807"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/tags?post=7807"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}