Intellectual Property Law: What Cannot Be Patented?

By Morgan Chu & Dominik Slusarczyk

Seismic rumblings continue to shake up what can and cannot be patented. The Supreme Court’s decisions in Alice Corp. Pty. Ltd. v. CLS Bank International¹and Mayo Collaborative Services v. Prometheus Laboratories, Inc.² created a new standard about what is and is not eligible for patent protection. While appellate decisions from the Federal Circuit over the past year provide new guidance in this arena, they add little clarity or certainty to the law.

Section 101 sketches in broad strokes the subject matter that may be patented: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."³ The provision is by no means the sole authority on patentability; other notable and more familiar requirements for patentability include the novelty and nonobviousness requirements set forth in 35 U.S.C. sections 102 and 103. Section 101 is, however, the most rapidly developing patentability constraint in recent years.

The Alice and Mayo Supreme Court cases set forth a two-step framework for determining whether a patent claims ineligible subject matter. Although section 101 itself is not explicitly phrased as an exclusion on what can be patented, courts have held that " [p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts . . . are the basic tools of scientific and technological work,"⁴ and thus do not fall within the scope of eligible subject matter in section 101. An accused infringer of a patent may defend an infringement action by successfully showing that the patent is invalid for claiming ineligible subject matter.