Copyright's Hand Abstractions Test for Patent's Section-101 Subject-Matter EligibilitySanta Clara High Technology Law Journal (2014)
AbstractSince 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. § 101 has been uncertain. This paper posits patent law's patent-ineligible abstract ideas are science concepts and science laws, composed of science concepts, as defined by science philosophers. Somewhat analogous to copyright law, it also presents a Downward Patent-Eligibility Hand Abstractions Test from an alleged abstract idea or natural phenomenon to independent claims as a coherent, systematic, and practical approach to judging utility-patent eligibility. Patent claims manifest an innate vertical abstractions ladder, so there is no need to further abstract ideas from the claims. The fact-finder must add features to the alleged abstract idea or natural phenomenon to move down the abstractions ladder to see whether an in-dependent claim merges with the abstract idea or phenomenon while combating human compulsions, and the test’s known bias, toward over-abstraction. The test automatically adjusts to ever-changing science concepts and laws and their word expressions. Contrary to the Federal Circuit's recent en banc decision, the Downward Patent-Eligibility Hand Abstractions Test would have held most of the claims patent-eligible in CLS Bank International v. Alice Corporation.
Citation InformationMark R. Carter J.D., Ph.D.. 2013. "Copyright's Hand Abstractions Test for Patent's Section-101 Subject-Matter Eligibility" The SelectedWorks of Mark R. Carter, J.D., Ph.D. Available at: http://works.bepress.com/mark_r_carter_jd_phd/4, 30 Santa Clara Computer & High Tech. L. J. (2013) (forthcoming)