I raised this up a year or two ago, but what the heck… Here's a fuller statement.
The Supreme Court was wrong to read 101 to limit eligible subject matter. Although it has done so for 50 years, it has never analyzed the statutes closely. Further, only in the last few years (Prometheus onward) has it held that lack of eligible subject matter is a defense to an issued patent. This holding is clearly wrong. Competent lawyers need to raise this issue (how's that for my ethics hook?).
What is now in 101, 102, and (implicitly) 103 was prior to 1952 in one section, 4886. It provided:
Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tubor-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may… obtain a patent….”
Congress created a commission in 1948 to study the definition of “invention” applied by the Supreme Court, and also, more importantly, the holding of In re Thau, which in dicta stated that a process using an old composition of matter was not eligible for patenting. See also 100(b), quoted below. (Thau involved poorly drafted claims. Long story.) Congress wanted to reject Thau and make it clear that, while a product claim to an old material was not patentable, a process claim using an old material was eligible for patenting. In other words, Congress set out to broaden section 101 to overrule Thau and to eliminate subjective tests of "invention" that the Supreme Court had made up in the years leading up to 1952. See the materials cited in Chief Judge Rader's opinion in CLS Bank.
This culminated in 1952 legislation. The text of what became 100(b), 102, and 103 were developed, and Congress expressly split 101 away from the conditions of patentability it put into 102 and 103:
Pre-1952 Section 4886
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1952 Patent Act
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“Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tubor-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more than one year prior to his application, unless the same is proved to have been abandoned, may… obtain a patent….”
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100(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
101 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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102 “conditions of patentability”
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103 “conditions of patentability
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282 – defenses include “conditions of patentability" in Part II of Title 35, section 112, and some other defenses, including equitable defenses. Section 101 is not listed and is not a “condition of patentability.”
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Congress indisputably did not want any distinction between “invention” and “discovery” to be relevant. It wanted a process claim that happened to use something old to be a "process." It wanted clarity and an objective test (this drove adoption of 103) as to "inventiveness."
Now to run through it. Here is why I believe Congress did not want "violations" of Section 101 to be either conditions of patentability or a defense to infringement of an issued patent. Starting with the plain text, Section 282 is states that “conditions of patentability” in part 2 of Title 35 are defenses. While in Part 2, section 101 is not labeled as a “condition of patentability:” only 102 and 103 are. (112 is set forth in mandatory terms, unlike 101 which says “may,” and section 112 is referred to in Section 282, as are some equitable defenses). Further, there are glaring textual differences between 101 and 102/103/112:
- 102/103: There is no burden of proof in Section 101 on the patent office to grant unless the claim is to unpatentable subject matter, unlike 102/03, which require PTO to grant unless it establishes that the claimed invention is not new/nonobvious.
- Finally, and I think tellingly, all section 101 does is say that someone who invents a new/useful thing can go get a patent if they want to. That's it. It doesn't even say the PTO can only issue patents on processes/products/etc. That's not what it says. Read it.
The legislative history and drafter/leader comments show 101 is not an invalidity defense because it is not a “condition of patentability:"
- Earliest bill explained that the original statute, 4886, was being “split into two sections, section 21 relating to the subject matter for which patents may be obtained, and section 22 relating to the conditions under which a patent may be obtained.”
- S Rep.: “Section 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirements of this title.’ The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.”
- S. Rep: “The… definition [of process in 100] clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of mater, or materials; they are processes or methods under the statute and may be patented provided the conditions for patentability are met.”
- S. Rep. testimony of Federico: “Now, under section 101 a person may have invented a machine or a manufacture, which may include anything under the sun that is made by man, but it may not necessarily be patentable unless the conditions of patentability are fulfilled.” (I.e., something is an invention but may not be new or nonobvious; but whether it is an "invention" is not an issue.)
- Giles Rich 1960: “Section 101 lays down, too, with respect to all categories of patentable inventions, the basic requirements of novelty and utility…. Sections 102 and 103 both have headings which commence with the words ‘Conditions for Patentability.”
- Federico: Section 4886 had “specified the subject matter for which a patent could be obtained and recited conditions for patentability. In the new code, this section has been divided into two sections, section 101 relating to the subject matter for which a patent may be obtained, and section 102 which defines statutory novelty and states other conditions for patentability.”
Further, the language of 101 concerning processes was amended in substantial part to overcome court decisions that had construed “invention” in 4886 to mean that methods applying old and well known materials, processes, or devices to new uses were not patentable methods (E.g., In re Thau). There was no concern whatsoever about 101 being too broad and patentable subject matter needing to be restricted. In fact, a proposed narrowing of the concepts now in 101/100(b) was not adopted.