McDonnell Boehnen Hulbert & Berghoff LLP
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The Murky Morass of Section 101
What qualifies as patentable subject matter? In theory, “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof” qualifies for
patent protection.1 According to the Supreme Court, 35 U.S.C. § 101 essentially allows a person to
receive a patent for any man-made invention.2
However, while § 101 may act as a “coarse eligibility filter,”3 it is not without boundaries.
Unfortunately, the courts have struggled to identify those boundaries. As a consequence, challenges
to patentability under § 101 are becoming frequent.4 Thus, the “murky morass that is § 101
jurisprudence”5 can pose a significant problem for patentees.
Wading into the Morass
Perhaps the more practical question is: what is not patentable subject matter? The Supreme Court
has identified three implicit exceptions to the admittedly broad scope of § 101: laws of nature,
physical phenomena, and abstract ideas.6 While an application of one of these exceptions may
receive patent protection,7 a patented invention cannot foreclose others from using a concept that is
“part of the storehouse of knowledge” available to the public at large.8
Whether an invention is directed toward a law of nature or a natural phenomenon is (allegedly)
straightforward. Though there is no bright-line rule, the Supreme Court’s cases discussing the
exceptions to § 101 “provide workable guidance” in resolving the patentability issue.9 What qualifies
as an abstract idea is considerably less clear. As Justice Stevens has admitted in the well-known
Bilski case, “[t]he Court [did not provide] a satisfying account of what constitutes an unpatentable
abstract idea.”10 Method claims are most likely to be challenged as being directed to allegedly
abstract ideas that are unpatentable.11 However, the Federal Circuit has also found computer-
readable medium claims that involve only steps that could be performed mentally or with pencil and
paper to be unpatentable under § 101.12
At surface level, the Federal Circuit seems to have recently adopted a more passive approach to
patentability. Rather than attempting to craft a new test, the court no longer “presume[s] to define
‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so
manifestly as to override the broad statutory categories” of § 101.13 Perhaps the court is saying that
it knows an abstract idea when it sees one.
Not surprisingly, this abstract approach to identifying abstract ideas has led to considerable
disagreement between Federal Circuit judges in recent decisions addressing the issue. Panels have
internally disagreed on the patentability of methods for storing data in a database,14 methods for
processing credit applications,15 methods for determining when to immunize patients,16 and methods
for comparing or analyzing DNA sequences.17 In the Supreme Court, five justices held that at least
