Comiskey Revisited: Section 101 as Gatekeeper for Patentability Requirements?

May 7, 2009 Published Work
Presented in Manhattan on April 30, 2009 at the 25th Annual Joint Patent Practice Seminar

Like Humpty-Dumpty, we patent lawyers would hope that our words would mean to others what we want them to mean to ourselves. Certainly we like to think we know what "patentable subject matter" means to us. However, the phrase risks confusion among non-patent people who may tend to construe "patentable subject matter" as "subject matter that is patentable" and, thus, deserving of a patent. The mere possibility, nay probability, that the phrase might be construed in this fashion poses a risk that some influential non-patent lawyers, such as, for example, Justices of the Supreme Court, could themselves become confused. Such confusion is not a good thing for our patent system.

At last year's JPP seminar, we discussed the role that Section 101 of the Patent Act of 1952 (herein "the '52 Act") plays in determining what is, and what is not, a patentable claim. Its proper role is as a threshold consideration that must, of necessity, be considered before moving on to the other requirements for patentability, namely those contained in Sections 112, 102 or 103 of the '52 Act. If, and only if, the claim passes muster under Section 101, then other considerations come into play, setting the stage for determining whether the claim passes muster from a disclosure standpoint, and from the standpoint of novelty and unobviousness. Accordingly, Section 101's proper role is that of "gatekeeper" that must be considered before the other patentability requirements.