70 Am. U. L. Rev. 1937 (2021).
* University of California, Berkeley Law School. Thanks to Shyam Balganesh, Chris Beauchamp, Yochai Benkler, Eric Claeys, Joshua Cohen, Abraham Drassinower, John Duffy, Terry Fisher, Mark Gergen, Wendy Gordon, Justin Hughes, Dimitry Karshtedt, Peter Lee, Mark Lemley, Peter Menell, Rob Merges, Adam Mossoff, Sean O’Connor, Michael Risch, Pam Samuelson, Ted Sichelman, David Simon, James Stern, and participants at the Center for the Protection of Intellectual Property’s 2019 Colloquium on Philosophical Approaches to IP and 2019–2020 Edison workshop, and the 2020 IP Scholars Conference at Stanford Law School, for valuable comments on earlier drafts. Special thanks to Oren Bracha for invaluable conversations and comments on this Article and the larger project of which it is a part.
Patent law’s doctrine of ineligible subject matter is widely agreed to be in a bad state of repair. Even those welcoming the Supreme Court’s return to express subject-matter bars have been left disoriented by the Court’s pronouncements in this area. Which subject matter is ineligible, why it is ineligible, and how it might become eligible have all remained enshrouded in mystery.
The nub of the problem, this Article contends, is two-fold. First, from its nineteenth-century origins to the present, courts grappling with ineligibility doctrine have remained in the grip of a series of “physicalist” misconceptions of the object of patent rights, and hence of the subject matter claimed in the patents at issue. In a nutshell, courts have not fully internalized that the object of patent rights is always and only an intangible space of “knowledge of” something, and never some “thing” itself. As a result, they have failed to characterize accurately the content of the ineligible subject-matter categories, much less specify why they are ineligible. Removing these physicalist errors dissipates much of the fog in this area. In its wake emerges a second distinct theme of ineligibility case law: the intimation by the courts of a set of embryonic “functionality” concerns, which seek to restrict patents to zones of applied rather than basic knowledge. But these concerns have remained inchoate, owing to their entanglement in a physicalist web. Thus, reconstructing eligibility doctrine requires extricating incipient functionality concerns from the physicalist thicket, developing their independent policy bases, and finally, properly following through on their doctrinal implications.
Doing so yields three large gains. First, it provides the first unified account of this body of law, something that scholars had despaired of realizing. Second, it advances a distinctive “platform” rationale for why basic research should remain outside the patent system, and be sustained instead by publicly funded peer production. Third, it cures each of the three defects marring eligibility’s existing doctrinal framework: (1) under “step one” of the framework, it clarifies what precisely is the content of the ineligible categories; (2) under “step two” of the framework, it radically improves the analysis of how a claim with such ineligible content may be rendered eligible; and (3) finally, when moving from eligibility into an analysis of the substantive requirements of patentability, it clarifies how to follow the courts’ (heretofore nebulous) injunction that claims must be evaluated “as a whole.”