Regeneration in American Patent Law: Statutory Subject Matter

Abstract

There appears to be some consensus that there are three identifiable jurisprudential periods in American law. These are: the first formative period extending from the ratification of the Constitution to about the Civil War; a second formalist period extending from about the Civil War to between the World Wars, and a third modern period from the demise of the formalist era. Whether we may now be in the post-modern era is well beyond the scope of the present inquiry, which is limited to patent law and a single - albeit important - issue within patent law.

The working hypothesis is that patent law would generally follow the same jurisprudential patterns in the same general time frames as other areas of law. Indeed, this assumption would seem justified by the use of broad, general language in patent statutes over the entire period in question and hence by leaving it to the courts to interpret and elaborate upon undefined terms of art. One might, however, be somewhat suspicious that formalism might play a significantly greater role in patent law because of its technical nature - technological and legal. To test this and the base hypothesis of the correspondence of patent law to general American law in its evolution through the identified jurisprudential periods, one particular issue in patent law has been selected. The issue is: What constitutes patentable subject matter "- the patent eligibility issue. That is, what may be patented irrespective of the subject matter's substantive merit in terms of novelty, utility, nonobviousness, or value to society."

From analyzing the principal cases dealing with patentable subject matter in the respective periods, the working hypothesis that patent law would follow general law appears to be sustainable, however, with the caveat that a strong strain of formalism was not detected even during the formalist era. Rather, there appears to be a regenerative, self-correcting mechanism at work over time with respect to decisions restricting the scope of patent eligibility. These regenerations appear to represent repeated reversions to the policy-driven, decision-making process of the formative period.

Keywords: patent, jurisprudence

JEL Classification: K1, K10