By Lawrence Hoffman

I have never seen anything complimentary written about the state of the law on patent eligibility in the U.S. Two recent proposals have been made to amend §101 of the Patent Act to address the problem. I have even seen arguments that advocate repeal of §101 altogether.

Most observers seem to agree that the biggest problem is how to handle the the exceptions, particularly in the context of methods related to commerce. Many argue that business methods should categorically be patent eligible, but I do not believe the drafters of the Constitution considered conduct of commerce to be a “useful art”.

Nevertheless, I believe that a method should not be excluded from patent eligibility just because it has applicability to commerce as long as it can be claimed in a way that is constitutionally valid.

The two proposals for amending §101 are enormous improvements even as they stand, but, to this observer, they fall short because they don’t address the patent eligibility of process patents in constitutional terms.

My purpose here is to initiate an discussion of a way to revise §101 that takes explicit account of the IP Clause and clarifies the manner in which an invention applicable to commerce can be constitutionally valid. In this part of a two-part article, I will discuss and compare the two proposals, the historical underpinnings and meaning of the IP Clause of the Constitution, the succession of patent laws as they dealt with patent eligibility. I will demonstrate, convincingly I hope, that the drafters of the Constitution did not regard methods of commerce as valid subjects of patents.

In the second part, I will offer a suggestion for improving one of the proposals.


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