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Patents 101: Patentable Subject Matter and Separation of Powers
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  • Max Stul Oppenheimer, University of Baltimore School of Law/ The Johns Hopkins University
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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 may patent. While the congressional

definition of statutory subject matter (in what is now 35 U.S.C. § 101)

has remained fundamentally constant since 1790, the Supreme Court

has reinterpreted and redefined statutory subject matter several times,

leaving lower courts with the frustrating task of trying to develop a

coherent jurisprudence against a changing landscape. This

inconstancy has introduced uncertainty for inventors who are trying to

make the fundamental decision of whether to maintain a trade secret

or seek patent protection for an innovation. Notwithstanding repeated

admonitions to the lower courts not to read words into the patent

statute, the Supreme Court itself has created three exceptions to the

categories of statutory subject matter established by the clear words of

§ 101: laws of nature, physical phenomena, and abstract ideas. This

intervention would be defensible if it were constitutionally required or

if the statutory language were ambiguous, but neither is the case. In

fact, the Court's particular intervention is counter to the constitutional

mandate to promote progress. In certain cases, this disincentive may

be sufficient to prevent promising new technologies from ever

developing. This Article proposes that Congress should consider the

judicially created exceptions to the statutory categories of patentable

subject matter and amend the statute so as to end judicial intrusion

into patent policy making.

Citation Information
Max Stul Oppenheimer. "Patents 101: Patentable Subject Matter and Separation of Powers" (2012)
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