The doctrine of patent-eligible subject matter is a mess, and it is weakening patent rights in this country. Nearly everyone, from the bar to the bench and from academia to industry, has called for reform. Multiple proposals to amend 35 U.S.C. § 101 have been drafted, each aimed at trying to make the doctrine more workable. Although offered with the best intentions, the proposals to fix patent-eligible subject matter are doomed to fail because none of the proposals address which institution is best suited to determine patent eligibility.
This Article takes a different, and perhaps radical, tactic. Specifically, patent-eligible subject matter inquiries should be vested solely in the courts. The U.S. Patent and Trademark Office (Patent Office) should not consider patent eligibility of patent applications or issued patents. Although this solution seems incongruous, in looking at the particular institutional competencies of the courts versus the various components of the Patent Office, it becomes clear that if the doctrine of patent-eligible subject matter is to be fixed, the courts are in the best position to do so. In addition to being particularly suited to determine patent eligibility, vesting these decisions in the courts should result in a more workable and certain test for patent eligibility, which in turn should strengthen patent rights and enhance innovation.
Kristen Osenga, Institutional Design for Innovation: A Radical Proposal for Addressing § 101 Patent Eligible Subject Matter, 68 Am. U. L. Rev. 1191 (2019).