Abstract

     In defining patent law, lawmakers and courts face the unusual challenge of describing the future characteristics of useful devices and processes that are presently nonobvious but which are within the scope of the “useful arts” and the range of patentable subject matters. This article reassesses the Federal Circuit’s patentable subject matter standards in anticipation of the Supreme Court’s possible review of those standards. The article argues that patentable subject matter standards which are appropriately open ended should focus on three minimum features in determining whether a design of a new advance constitutes patentable subject matter – (1) the inventor's articulation of a precise definition of the advance such that the advance is transferable to and usable by multiple parties; (2) the production of immediately available and regularly obtained practical benefits through use of the advance; and (3) the lack of field-specific policy reasons to believe that, if patent controls are applied to the advance, the advantages of innovation incentives normally associated with patent rewards will be overwhelmed by countervailing public injuries from the patent controls. The recent extension of patentable subject matter to tax planning methods for reducing tax liabilities is then examined under these criteria to demonstrate application of the criteria and the sufficiency of these criteria in focusing complete evolutions of the net public benefits achieved by extending patent controls and incentives to new categories of practices and devices.