The Rule Against Abstract Claims: History and Principles

Abstract:

This article traces the history of the rule against the patenting of abstract ideas, and shows that it has consistently been held to prohibit only claims to an abstract idea as such; a claim to an application of an idea is acceptable, even if the inventive concept lies solely in the idea. An alternative interpretation, that the rule prohibits claims to inventions in which the inventive concept lies solely in an idea, has been expressly rejected. The article then considers the policy justification for the rule, which is less clear. There are three justifications that plausibly explain the rule as traditionally understood: the requirement that a patented invention provide a present benefit; the property principle, which requires that a potential infringer can determine ex ante whether its course of action will infringe; and the evidentiary principle, which requires that infringement of the invention must be susceptible to being reliably proven. The article argues that the property principle provides the best justification for the rule, but these three rationales are generally consistent and the case law to date does not allow one to be preferred over the others. None of them supports a requirement of physicality in the invention as claimed.