Swartz, Rodney


With what seems to be a fluke of history, the Supreme Court has developed a subject matter analysis framework embodied in 35 U.S.C. § 101 that relies on the preemption doctrine to justify invalidation. This Article establishes that preemption has a distinct objective that is more closely aligned with the written description framework of § 112 than with the subject matter eligibility framework of § 101. As a result of relying on preemption, the Court has created an arbitrary and difficult to apply test, resulting in a chasm between the United States Patent and Trademark Office (USPTO) and courts that is reminiscent of the difficulties in the patent system that lead up to the Patent Act of 1952.

In response, this Article proposes a new framework that separates the preemption analysis from the subject matter eligibility analysis. Under this new framework, subject matter eligibility would revert to its pre-Benson approach, where judicial exceptions only cover natural phenomena, natural laws, and abstract ideas but not their equivalents. Further, this new framework is based on an objective standard where a claim is determined to be overly broad if it covers more than what the inventor has established they invented or modifications that are obvious to a person having ordinary skill in the art. After developing the new framework, this Article applies the approach to Parker v. Flook, Diamond v. Diehr, and Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC. This analysis demonstrates the new framework, provides a reasonable explanation for why the field limitation in Flook is not sufficient for satisfying claim breadth, which was unclear in the Court’s decision, and addresses the issues around the perceived per se law against medical devices.

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