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TABLE OF CONTENTS I. ELIGIBLE SUBJECT MATTER DOCTRINE 807 A. Section 101 and Methods of Interpretation 808 1. The 1980's: Section 101 as a "Coarse Filter" 808 2. The 2010's: [...], The eligibility of inventions for patent protection under 35 U.S.C. Section 101 was altered substantially by the Supreme Court's decisions in Alice v. CLS Bank and Mayo v. Prometheus. These decisions and their progeny have expanded application of the implicit "judicial exceptions" to patent eligibility for laws of nature, natural phenomena, and abstract ideas. The resulting uncertainty has proven untenable for many stakeholders in the patent system, impeding innovation. With the Supreme Court steadfastly declining to provide clarity by granting certiorari in recent cases raising Section 101 questions, many are calling for Congress to act. While policy debate around Section 101 reform is alive and well, much of the scholarship on the issue focuses on the principles that ought to guide reform. This Note seeks to further the conversation by comparing justifications for subject matter restrictions against specific statutory language. Using the Patent Eligibility Restoration Act of 2023 (PERA) as a case study, this Note compares PERA with the theory and recommendations provided by patent law scholars and finds it is strikingly consistent with utilitarian and other normative justifications for subject matter restrictions. This reformulation of Section 101 may alleviate much of the uncertainty harmful to stakeholders in the patent system. Recognizing imperfections in PERA, this Note concludes by proposing two amendments that would provide greater clarity and restrict eligibility for patents that are unlikely to provide societal value.

INTRODUCTION 926 I. PATENT ELIGIBILITY: HISTORY AND PRESENT LAW 928 A. Evolution from 1952 to 2012 928 B. The Current Framework: Mayo v. Prometheus 930 C. Mayo Spreads: Alice Corp. [...], Though the Patent Act broadly defines the types of inventions eligible for patenting--processes, machines, manufactures, or compositions of matter--judicially created exceptions exclude certain fundamental categories. No inventor may patent a natural law, mathematical formula, or an abstract idea. But what separates an abstract idea from a concrete implementation that integrates the abstract idea into a patentable invention? In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Supreme Court required inventors to add significantly more to the underlying principle, formula, or abstract idea to receive a patent. And in Alice Corp. v. CLS Bank, the Court held that adding generic computer technology does not suffice. Subject matter eligibility of patents in the wake of Mayo and Alice has become a major obstacle to many inventions, and patentability has been difficult to predict. Asking whether a patent claim includes an inventive concept that adds significantly more to an ineligible idea is straightforward; answering consistently has proven elusive for both the courts and the patent office. This Comment proposes borrowing a principle from copyright law--the merger doctrine--to bear on patent eligibility. Under the merger doctrine, if there are only very few ways of expressing an uncopyrightable idea, then each of those expressions is uncopyrightable because they are merged with the idea. The merger doctrine aim of separating the protectable from the unprotectable parallels the eligibility question in patents, and it offers more intuitive application and framing than what is currently used in the patent sphere.

I. INTRODUCTION II. PATENT ELIGIBILITY OF HUMAN GENES, SCIENTIFIC DISCOVERIES, AND OTHER NATURAL LAWS AND PHENOMENA III. EFFECTS FOR SCIENTIFIC RESEARCH A. Early-1900s "Scientific Property" Proposals B. Deterrence of Downstream [...], Recently, Congress has considered legislation to amend [section] 101, a section of the Patent Act that the Supreme Court has held to prohibit patenting of laws of nature, natural phenomena, and abstract ideas. This draft legislation would expand the realm of patent-eligible subject matter, overturning the Court's precedents along the way. The draft legislation, and movement to change this doctrine of patent law, made substantial headway with a subcommittee of the Senate holding numerous roundtables and hearings on the subject. This article considers some less-discussed consequences of that draft legislative proposal. The legislation likely opens the door to patenting of subject matter such as human genes and scientific discoveries, given its broad language and abrogation of precedent. Allowing such patents would have consequential effects such as potentially raising drug prices, decreasing quality of health care, deterring scientific research, slowing the development of innovative technologies, and conflicting with scientific and ethical norms. Considerations such as these ought to be top-of-mindfor legislators intending to change the law of patentable subject matter eligibility.

NOTE CONTENTS INTRODUCTION 2180 I. SUBJECT-MATTER ELIGIBILITY: A PRIMER 2187 A. The History and Function of Subject-Matter Eligibility 2187 B. Recent Doctrinal Attempts to Flesh Out [section] 101 2191 C. [...], The doctrine of subject-matter eligibility, as developed from 35 U.S.C. [section] 101, ensures that no one can stifle innovation by gaining a monopoly over an abstract idea, natural phenomenon, or law of nature. By excluding abstract ideas and laws of nature from patent protection, the doctrine ensures that no one can stifle innovation by gaining a monopoly over something as fundamental as the law of gravity. But recent decisions by the Supreme Court and the Federal Circuit have muddied the distinction between patentable and unpatentable subject matter. The resulting doctrinal confusion around subject-matter eligibility has prompted innovators to warn of serious consequences to investment and also spurred a notoriously ossified Congress to consider bipartisan reforms. Enter the United States Patent and Trademark Office (USPTO). Although this office lacks the formal authority to promulgate substantive rules on subject-matter eligibility, it has nonetheless broadened its use of guidance documents in that area as a means of addressing this crisis. This Note chronicles the USPTO's use of these guidance documents across time, as well as how federal courts and the Patent Trial and Appeal Board have come to rely on them. It argues that these guidance documents, for all their regulatory utility, closely resemble legislative rules. Looking ahead, this Note encourages Congress to grant the USPTO rulemaking authority over patentability. Until it does so, the USPTO's recent guidance threatens to push the boundaries of its current authority and run afoul of the Administrative Procedure Act.

CONTENTS INTRODUCTION I. ALICE STANDARD UNDER THE FEDERAL CIRCUIT'S JURISPRUDENCE A. Step One B. Step Two II. NETWORK ARCHITECTURE PATENT CASES A. Amdocs (Israel) Ltd. V. Openet Telecom, Inc. 1. [...], Network architecture technology is used to facilitate communications in a computer network. This computer-implemented technology is exposed to the patent-eligibility review under the Alice standard. This article reviews four Federal Circuit's decisions related to network architecture patents and concludes that there may be a single test for patent-eligibility of network architecture patents. The Federal Circuit searches for unconventional features that the invention implements in conventional or unconventional network architecture. To satisfy the unconventionality requirement, a claim must include a mechanism for executing the claimed unconventional feature. For example, a claim may recite physical components or software components of the invention's network architecture. How to achieve such a mechanism must be described in the specification.

Abstract. When judges change the legal rules governing patents, those changes are always retroactive. That is, they apply equally to patents that have already been granted and patents that do [...]

I. INTRODUCTIONAs far back as the 1970s, the Supreme Court has wrestled with the issue of whether patents should be granted for computer software and mathematical algorithms. By statute, 35 [...]

INTRODUCTION I. Personalized Medicine A. Personalized Medicine: Then and Now II. SUBJECT MATTER ELIGIBILITY A. Patentable Matter, Pre-2012 B. Refining the "Coarse Filter, " 2012-Present 1. Mayo and Something More [...]

ABSTRACT Technological advances have always been supported by a robust patent system that encourages disclosure of inventions by providing protection to the inventor. Society has benefitted from this system, which [...]

ABSTRACT This Article explores the largely overlooked relationship between claim construction and patent assertion entities (patent "trolls"), finding that claim construction problems and trends benefit patent assertion entities. First, the [...]

I. INTRODUCTIONCan you imagine being sued for normal, everyday activities like using your cell phone, operating a scanner, or even creating a podcast? American businesses have recently faced frivolous lawsuits [...]

III. SUBJECT-MATTER ELIGIBILITY IN PATENT LAW First, this part will revisit the questions posed by Mayo, as discussed in Part I. This part argues that Altai serves to better harmonize [...]

TABLE OF CONTENTS INTRODUCTION I. CONDITIONS FOR RECEIVING A PATENT A. Section 101 and Its Exceptions B. The Other "Doors" to Patentability II. DISTINGUISHING NATURAL LAWS, NATURAL PHENOMENA, AND ABSTRACT [...], Patentable subject matter has become one of the most controversial areas of patent law. Efforts to articulate a lucid and productive theory of patentable subject matter must acknowledge that there are two competing models of unpatentable subject matter. One posits that natural laws, natural phenomena, and abstract ideas are themselves ineligible for patenting, and that each example of a natural law, natural phenomenon, or abstract idea further defines a class of inventions that cannot be patented because they lack an additional element of ingenuity--or "inventive concept"--that sufficiently distinguishes those inventions from their natural counterparts. This "penumbral" model of unpatentable subject matter mirrors the statutory structure of anticipation and obviousness. The competing "binary" model of unpatentable subject matter posits that one must only apply a natural law, natural phenomenon, or abstract idea in a useful manner in order to have a patent-eligible invention. Potential versus application is an either/or proposition. Recent attempts to achieve synthesis have adopted the penumbral model. However, the shadows and degrees of the penumbral model are an uncomfortable fit for the subject-matter inquiry. Particularly in the case of natural laws, treating newly discovered principles as a given (or as a baseline to which one must add a further "inventive concept") threatens to overlook the true nature of invention, as well as valuable contributions to the technological arts. Here, at least, the binary model is in need of revival and reaffirmation.

TABLE OF CONTENTS INTRODUCTION I. OPEN QUESTIONS IN MAYO COLLABORATIVE SERVE. V. PROMETHEUS LABS., INC II. ANALYSIS OF COMPUTER PROGRAMS IN COPYRIGHT LAW A. Abstraction-Filtration in Computer Associates Int'l, Inc. [...], This article critiques and refines the subject-matter eligibility inquiry in patent law by examining the process of creativity in the context of software-implemented inventions. As a substantive critique of § 101 jurisprudence, this article, informed by copyright law, proposes a working hypothesis for a general structure of the subject-matter eligibility inquiry in which a critical determination is the appropriate level of abstraction for claim construction. As a discursive critique of the limits and limitations of judicial language, this article argues that courts have incorrectly presumed that contemporary legal thought is equipped, conceptually and linguistically, to understand the full significance of modern technologies and the grammars of their creation. Closely reading the human agency and design choices that inhere in technology, this article seeks to resolve the open questions posed by Mayo Collaborative Servs. v. Prometheus Labs., Inc., to harmonize Diamond v. Diehr and Parker v. Flook, and to refine Alice Corp. v. CLS Bank Int'l.

IV. PATENTABLE INVENTIONS AND PHENOMENA OF NATURE Mayo could be said to involve both natural laws and natural phenomena. The correlation between metabolites and an effective dosage is a natural [...]

TABLE OF CONTENTS I. INTRODUCTION II. THE ROAD TO ALICE CORP. V. CLS BANK A. The Trilogy: Benson, Flook & Diehr 1. Gottschalk v. Benson 2. Parker v. Flook 3. [...], The US Supreme Court's difficulty in promulgating a standard for patent-eligibility has not gone unnoticed in the academy. Hundreds of academic conferences, including this one, have been devoted to the topic. The goal of this Article is not to solve the seemingly intractable problem of patent-eligibility doctrine. The goal of this Article is rather more modest. Instead of normatively assessing patent-eligible subject matter doctrine, this Article seeks to identify which foundational theories of patent-eligible subject matter can most readily be applied by courts and the US Patent and Trademark Office via Section 101. In doing so, this Article categorizes the various innovation theories that scholars have applied to Section 101 and analyzes whether the resulting doctrines can be predictably applied by the institutions involved in patent law. Appreciating the applicability of patent-eligible subject matter theories can assist the Supreme Court in shaping doctrine that best achieves the policy goals underlying those theories.

Often what is not said is as significant as what is said. In its recent Myriad Genetics decision, the United States Supreme Court is curiously silent about the relationship between [...]

2. Hand Abstractions Test (Abstractions Test)--Separating Copyright-Ineligible Ideas from Eligible Expression a. General Test Judge Learned Hand first stated the abstractions test with: It is of course essential to any [...]

Since the Federal Circuit's 2007 In re Bilski decision and the Supreme Court's 2008 Bilski v. Kappos decision, patent law's subject-matter eligibility standard under 35 U.S.C. [section]101 has been uncertain. [...]

ABSTRACT The Supreme Court has as of late taken renewed interest in what inventions or discoveries are deserving of entry into the patent system. Section 101 of Title 35 opens [...]

I. INTRODUCTION II. PATENTING GENES IN INDIA: EXPLORING THE LEGAL SPACE A. Options for Regulating Gene Patenting vs. Banning Gene Patenting B. Banning Gene Patenting in India: Violation of TRIPS? [...]

ABSTRACT The definition of statutory subject matter lies at the heart of the patent system. It is the reflection of Congress's policy decision as to what types of inventions one [...]

Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011). I. Introduction In 2010, the United States Supreme Court levied a decision in Bilski v. Kappos that cast [...]