Patent Eligible Inventions after Bilski: History and Theory, 63 Hastings L.J. 53 (2011)

74 Pages Posted: 9 Feb 2011 Last revised: 15 Mar 2013

Date Written: February 7, 2011


The U.S. Supreme Court has continued to require that patentable subject matter eligibility determinations under Section 101 be made by reference to three historic, categorical exclusions, for scientific principles, natural phenomena, and abstract ideas, which must be treated as if already known even when newly discovered by the applicant. Various thoughtful scholars have alternatively urged that these exclusions from the patent system should be viewed restrictively or that eligibility decisions should be avoided. But these scholars under appreciate the benefits of categorical exclusions and particularly of treating them as if they were already known prior art, and in any event the Federal Circuit (reluctantly), the Patent and Trademark Office, and the public must now take up the difficult task of drawing lines between eligible inventions and ineligible applications of excluded discoveries.

This article supplies a history and theory of subject matter eligibility to guide such line drawing, based on the recognition that the Patent Act (for both eligibility and patentability) has always required and still requires creative, human invention in the application of such categorically excluded discoveries. So long as these basic discoveries continue to be treated as if already known, notwithstanding the contribution of the applicant in identifying the knowledge, it will improve efficiency and reduce patent system errors to rely on threshold eligibility determinations. Supplying clearer criteria to define the additional creativity required for eligibility will further reduce overall patent system burdens and will better direct investment, effort, invention, and disclosure towards more creative, patentable applications.

These categorical eligibility exclusions were justified historically on both deontological and utilitarian moral grounds. Prudence counsels retaining them, given the high social stakes involved, the lack of theoretical or empirical demonstration that competing innovation approaches are better, and the moral concerns that would be raised by their elimination. The article thus concludes with an exhortation to celebrate rather than to reluctantly embrace patentable subject matter categorical exclusions, their prior art status, and the line-drawing that eligibility determinations require, to better protect the public domain of science, nature, and ideas while simultaneously improving the patent system.

Keywords: Patent, Eligibility, Eligible, Patentable, Patentability, History, Economics, Invention, Application, Prior Art, Religion, Morality, John Locke, Property, Intellectual Property, Politics, Takings, Legislation, Judiciary, Opinion, Comparative, Research, R&D, Science, Nature, Technology, Ideas

JEL Classification: D61, D63, D64, H41, K11, K21, K33, O30, O31, O32, O33, O34, O38, O39

Suggested Citation

Sarnoff, Joshua D., Patent Eligible Inventions after Bilski: History and Theory, 63 Hastings L.J. 53 (2011) (February 7, 2011). Available at SSRN: or

Joshua D. Sarnoff (Contact Author)

DePaul University College of Law ( email )

25 E. Jackson Blvd.
Chicago, IL Cook County 60604-2287
United States
312-362-6326 (Phone)

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