What is patentable subject matter? The Supreme Court dismissed Labcorp v. Metabolite Laboratories, but the issue is not going away

Introduction Patent law seeks to strike a balance regarding patentable subject matter between overprotection, which can impede the free exchange of ideas, and underprotection, which can lessen the incentive to invent. (1) Thus, what actually constitutes patentable subject matter under the Patent Act (2) is an important question and a question that the U.S. Supreme Court avoided in June 2006 by dismissing Laboratory Corp. of America Holdings (LabCorp) v. Metabolite Laboratories, Inc. (3) Section 101 of the Patent Act regarding patentable subject matter was not argued in the court below so the Court did not decide LabCorp on the patentable subject matter issue. (4) Future litigants, however, will not likely neglect to argue this so the Court will no doubt face this issue again. This article will examine the LabCorp case and the issue of patentable subject matter, concluding with recommendations for when the issue is raised by subsequent litigants. It seems probable that the Court will again address the subject of statutory subject matter on a case brought properly before it and will strike the balance that will encourage innovation but will not extend protection to processes or business methods that are merely ideas, phenomena of nature, or laws of nature. I. PATENTABLE SUBJECT MATTER "The Congress shall have Power ... [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (5) Pursuant to this power, Congress passed several patent acts, starting with the Patent Act of 1790, which allowed one who "invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement" not known or used before to petition for a patent. (6) The Patent Act of 1793 allowed an inventor to obtain letters patent for "any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement." (7) The Patent Act of 1836 again protected "any art, machine, manufacture, or composition of matter" and provided the foundation of the modern American system. (8) The Patent Act of 1870 again revised patent law. (9) Under the current patent law, as originally enacted through the Patent Act of 1952, an inventor may obtain a patent for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement." (10) Congress replaced the term "art" from prior acts with "process." (11) The Court has interpreted patentable subject matter numerous times. An illustrative and nonexhaustive discussion of key cases follows. In 1854, the Supreme Court considered one of Samuel Morse's claims regarding his patent on the electromagnetic telegraph in O'Reilly v. Morse. (12) Morse's eighth claim on the patent for use of the motive power of electric current, or electromagnetism, designed for making or printing letters or characters at a distance, (13) was deemed overbroad by the Court. (14) Generally, the use of natural phenomena cannot be patented. (15) The Court in 1972 in Gottschalk v. Benson (16) held that a method of computer programming to convert binary-coded-decimal numbers into pure numbers, which was not limited to any particular art or technology, was not a patentable process. The Court cited Morse when reaching the conclusion that a mathematical formula, like a law of nature, may not be patented. (17) Ideas, phenomena of nature, and algorithms are not patentable, (18) as they are the basic tools of scientific and technical work. (19) The Court in Parker v. Flook (20) in 1978, citing both Morse and Gottschalk, held that a method for updating alarm limits during a catalytic conversion process was not patentable subject matter under 35 U.S.C. [section] 101. (21) The Court stated that this case turned on the proper construction of [section] 101. (22) The plain language of this section does not answer the question, and the line between a patentable process (23) and an unpatentable principle is not always clear. …