Friday, March 7, 2014

Is Gunpowder Patentable Subject Matter?

The USPTO has issued new Guidelines on patentable subject matter in light of the USSC decisions in Myriad and Prometheus. It is evident from Examples C and D that gunpowder, if invented today, would not be considered patent eligible subject matter under the Guidelines. This result is peculiar, to say the least. One possibility is that the USPTO has misinterpreted the USSC, but in my view the Guidelines do a good job of reflecting the USSC jurisprudence. The real explanation for this peculiar result is that the USSC jurisprudence has run off the rails. For my argument that this is what has happened, starting with the Funk Bros 333 US 127 (1948) decision, see The Rule Against Abstract Claims: A Critical Perspective on US Jurisprudence, (2011) 27 CIPR 3, available in draft here. I was pleased to recently discover that I am not alone in this view: see this draft article by Jeffrey Lefstin, Inventive Application: A History. (The third possibility is that there really is some good reason why gunpowder should not be patentable subject matter, but I can't really think of any good arguments in favour of that position.)


  1. The guidelines are quite problematic from a practical standpoint as well--doctrinal issues aside.

    Questions 1&2 are threshold questions, which are so broad as to encompass any claim imaginable (what claim does not as some level "involve or recite" a "law of nature" or "natural substance or a substance derived from nature"?). Where there is *any doubt* about whether a claim meets these threshold questions, Examiners are required to proceed to the third inquiry anyway. Consequently, guidelines effectively impose a "significantly different" from nature test on all claims, based on weighing of eligibility factors.

    This type of weighing test is very subjective, as anyone who has experience dealing with section 101 objections after Prometheus knows. Unless your claims conform to one of the examples in the guidelines, subject matter eligibility becomes a matter of your skills of persuasion. The Guidelines suggest that Examiners are equipped to make these kinds of decisions, for example, when evaluating the Wands factors regarding enablement. However, in my opinion, there is a significant difference in evaluating the scope of enablement, the boundaries of which are necessarily vague and open to reasonable argument, and the black & white issue of whether an invention is eligible for patent protection or not.

    In particular it's a huge issue for patentees, who may not appreciate having to pay for a patent to be drafted and examined, to discover the Examiner is on the wrong side of a reasonable dispute about whether their invention is patentable.

  2. Indeed. As Frankfurter J pointed out in his opinion in Funk Bros (concurring in the result, but disagreeing with the majority analysis) “[e]verything that happens may be deemed ‘the work of nature,’ and any patentable composite exemplifies in its properties ‘the laws of nature.’ Arguments drawn from such terms for ascertaining patentability could fairly be employed to challenge almost every patent.”

    I agree also with your point regarding the subjectivity of the analysis, but in my view, the problem is not with the Guidelines, but with the USSC jurisprudence itself. Because every invention depends on the laws of nature, there can be no objective way of distinguishing those which do from those which don’t; the distinctions drawn by the USSC are simply arbitrary, as is illustrated by the gunpowder example. The examiners have no choice to engage in a subjective and arbitrary analysis, because that is what the USSC has mandated.

  3. It would seem that the US has now departed from the international norms of patentability further even than our own promise doctrine ever did. Perhaps it's time for a reciprocal NAFTA challenge?

  4. Perhaps Courtenay Brinckerhoff would agree with you. On her PharmaPatents blog she has has been highly critical of the new Guidelines. For example in her post of on 10 March she reviews patentability of pharmaceutical compositions and concludes by asking “Is this any way to promote innovation and investment in new technologies?” In her post of 31 March, on vaccines, she asks whether the rule emerging from the Guidelines “make[s] a mockery of the U.S. patent system?”

  5. Norman, you're prescient! On April 9th, Ms. Brinckerhoff linked to comments by an Australian bogger suggesting the US may be straying from its international commitments.