The U.S. Constitution expressly gives the federal government power to “promote the Progress of Science and useful Arts.” It explains that the system should provide incentives: “by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” 

The U.S. government has thus developed copyright law to incentivize writing, and patent law to incentivize research.

Over the years, patent law evolved to address the types of discoveries or inventions significant enough to warrant patent protection. In 1952, a patent statute stated, in section 101, that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” was presumptively eligible for patenting. A famous 1980 case expressed the default rule that patents could be filed for “everything under the sun made by man.”

However, courts created exceptions, holding natural  phenomena, use of natural laws, and mathematical algorithms were not eligible for patenting. As computer technology surged, the question arose of whether business methods, performed using computers, could be patented. In 1998, the federal court for patent appeals held in the State Street Bank case that useful, applied algorithms could be patented. More recently, however, the Supreme Court held in the Alice case of 2014 that some software patents were too abstract and therefore were not eligible for patenting. This created uncertainty and appeared to curtail patent incentives in important areas of the economy.

A recent legislative proposal seeks to help end uncertainty about which types of inventions may be protected in the patent system. The proposed text would eliminate the “judicial exceptions” to patent eligibility discussed above and replace them with statutory exceptions. The default would be that “useful” discoveries are eligible:

Any invention or discovery that can be claimed as a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, is eligible for patent protection.

Exceptions would be limited to the following:

  • A mathematical formula standing alone (that is, if not claimed as part of a useful process, machine, manufacture, or composition of matter).

  • A mental process performed solely in the mind of a human being.

  • An unmodified gene as it exists in the human body.

  • An unmodified natural material as it exists in nature.

  • A process that is substantially economic, financial, business, social, cultural, or artistic (even if a step in this process refers to a machine or manufacture).

Appearing to recognize the breadth of this last exception, the proposed statute states that if the process “cannot practically be performed without the use of a machine or manufacture” (e.g., a computer or other man-made device), it “shall not be excluded from eligibility.”

The statute also further clarifies that “isolated, purified, enriched” or otherwise human-altered genes or natural materials are eligible for patenting.

Because this proposed legislation has bipartisan sponsors, perhaps the debate will focus on the merits of scientific, economic, and legal policy.

Will this update to patent law improve the economy and the U.S. patent system?  Several questions arise from the fine print:

  • Should there be constitutionally-based, economic incentives to develop software to make business processes possible that cannot be practically done without computers?

  • Should manufacture of car parts be legally prioritized over software coding?

  • Should the law incentivize biotech and similar inventions that isolate genes and enrich chemical substances?


Now is the time for the public to weigh in.

Note from the Editor: The Federalist Society takes no positions on particular legal and public policy matters. Any expressions of opinion are those of the author. We welcome responses to the views presented here. To join the debate, please email us at [email protected].