Golan v. Holder Allows Patents On Laws of Nature, Physical Phenomena, and Abstract Ideas

The U.S. Supreme Court’s recent decision in Golan v. Holder suggests that the Constitution’s Patent and Copyright Clause imposes no meaningful substantive limits on Congress’ power over patent subject-matter eligibility. Congress could authorize patents that claim fire, the wheel, or any number of other ancient discoveries.

In Golan, the Supreme Court rejected a constitutional challenge to an act that re-imposed copyright protection on certain works that had been in the public domain. The Court held that the Copyright and Patent Clause does not make the public domain “a territory that works may never exit.”

The Court’s reasoning is defensible in light of history and precedent. But it raises interesting new questions about the constitutional limits (if any) on patentable subject matter.

Although Golan involved copyright issues, the case relied on analogous patent cases that effectively allowed re-issuance of expired patents: Evans v. Jordan (1815) and McClurg v. Kingsland (1843). McClurg took a broad view of Congress’s power to revive expired patents: “[T]he powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution, and as there are no restraints on its exercise, there can be no limitation of their right to modify them at their pleasure, so that they do not take away the rights of property in existing patents.”

The Golan petitioners tried to distinguish these two cases by relying on Graham v. John Deere Co. of Kansas City (1966): “Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.” The Court didn’t buy it and stated that Graham did not involve constitutional limits on Congress’ patent authority; Graham only addressed patent eligibility.

The Court’s treatment of Graham implies that there may be no constitutional limit to subject-matter eligibility. Limits on patentable subject matter might be solely statutory and not constitutional—just like limits on patent duration. After all, the Patent and Copyright Clause is broader than 35 U.S.C. § 101: The clause allows Congress to give exclusive rights to “discoveries.” Section 101 limits protection to processes, machines, manufactures, and compositions of matter.

“Discoveries” is a broader categories than the items listed in § 101. The laws of nature, physical phenomena, and abstract ideas are not patentable under § 101. See Diamond v. Chakrabarty (1980). But laws of nature, physical phenomena, and abstract ideas are discoveries. Golan’s reasoning suggests that unpatentable discoveries are constitutionally eligible for patent protection. No constitutional barrier prevents the issuance of patents for natural minerals, newly-discovered wild plants, E=mc, and the law of gravity.

Unfortunately, history and case law give very little guidance in properly calculating a reasonable royalty for infringing a patent on the law of gravity. Newton’s heirs have their work cut out for them.

Posted on February 3, 2012, in Constitution, Copyright, Patent and tagged . Bookmark the permalink. Comments Off on Golan v. Holder Allows Patents On Laws of Nature, Physical Phenomena, and Abstract Ideas.

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