Kevin Emerson Collins (Washington University in Saint Louis – School of Law) has posted Patent-Ineligibility as Counteraction (Washington University Law Review, Vol. 94, No. 4, 2017) on SSRN. Here is the abstract:
Today, debates over restrictions on patent-eligibility are premised on a discrimination theory of patent-ineligibility. The restrictions are assumed to cause the patent regime as a whole to discriminate against, and thus grant weaker patent protection for, the affected technology. The contested issue is whether there is a good reason to discriminate and grant the affected technology only weak protection.
This Article articulates a novel counteraction theory of patent-ineligibility. Starting from the default premise that all technologies merit roughly the same strength of patent protection, counteraction theory proposes that a well-tailored restriction on patent-eligibility is sometimes the most effective means of achieving the equality goal. The dematerialization of technology in today’s knowledge-age economy means that patent law’s “patentability conditions”—that is, its validity doctrines other than patent-ineligibility, such as novelty, nonobviousness, and enablement—sometimes cannot do the work of regulating patent validity that we expect them to be able to do. Certain patentability conditions suffer from technology-specific regulatory inefficacy: they have inherent biases in favor of expansive patent protection when they are brought to bear on specific intangible technologies. Restrictions on patent-eligibility can counteract or neutralize these biases, bringing the strength of the patent protection that is available for the affected technology back into closer alignment with the protection that is available for other technologies.
In addition to articulating counteraction theory as a theoretical possibility, this Article examines the restrictions on patent-eligibility in two intangible technologies on the front lines of the ongoing battles over patent-eligible subject matter: diagnostic inferences and software. In each technology, there are patentability conditions that fail to provide their usual validity-limiting regulation and that call for counteraction. The Supreme Court has recently announced restrictions on the patent-eligibility of both technologies that are controversial under discrimination theory, but the Court’s restrictions have a reasonable, although concededly imperfect, fit with the restrictions that can be justified under counteraction theory.