Pardon the quote of the Bard, but there is one area of patent law that, indeed, ponders “that is the question.” Bear with us for a moment while we try to set the stage. To qualify for a patent, the patent law statute passed by Congress states that an invention must meet three criteria: it must be new, useful, and non-obvious. For our present purposes, we will set aside the useful and non-obvious qualifications. To be new, in essence an invention must not have been thought of (or at least, disclosed) by anyone else. Simple enough.
But the U.S. Supreme Court, as judge made law, has grafted onto patent law the concepts that one cannot obtain a patent on a law of nature, a natural phenomenon, or an abstract idea. For instance, Einstein’s famous equation E=MC2 is said to represent a law of nature and, therefore, be unpatentable. Devices utilizing the law, like the bomb, are patentable. The idea here is that laws of nature belong to everybody and cannot be the exclusive property of anyone, while new applications of the law are patentable. In concept, a pretty straight forward approach. However, recently in the biotechnology realm, the concept of a law of nature has become twisted, contorted, stretched, strained, and abused – but we’ll talk about that another time.
For today, we will briefly delve into what is meant by “abstract” although we confess up front, that we cannot give you an unambiguous explanation. The meaning of “abstract” lies hidden under the murky waters of patent law involving much judicial semantic nonsense promulgated in major part by the U.S. Supreme Court. One interpretation is that a basic idea of an invention is abstract if it totally captures all possible uses of an idea. In this guise, patent examiners routinely reject applications that seem to have a mathematical expression at their core, especially computer and software implemented inventions. One court has recently expanded the concept of what may be abstract to the analysis of a method for hedging risk in financial dealings between two parties. Lest you think that we are ducking a good explanation of abstract, another federal appellate court recently decided (CLS Bank Int’l v. Alice Corp.) such a hedging idea was abstract, but could not articulate a consistent interpretation of why. In fact, seven different opinions were filed including at least three different tests for evaluating patent eligibility. Like pornography, the courts seem to know “abstract” when they see it.
Which brings us full circle: To be (abstract) or not to be (abstract), that is the question.
-Robert Yarbrough