Today, one of the most controversial topics in US patent law is whether software related inventions are patent eligible. To analyze whether the software patent is eligible, courts recite 35 USC 101, discuss the case law, then discuss whether the claim relates to an abstract idea. Too often the claim is paraphrased which can be a slippery slope, because one can always strip away claim limitations until an "invention" is too abstract then conclude it is ineligible.
Today, Professor Hricik argues courts have assumed non-statutory subject matter is an invalidity defense. Yet 35 USC 282(b) lists the following defenses: noninfringement, absence of liability for infringement, or unenforceability, and the invalidity of any patent on any ground specified in part II as a condition for patentability. When you turn to part II you see 35 USC 102 and 35 USC 103. It also says failure to comply with 35 USC 112 except the best mode is defense. The upshot is 35 USC 282 omits any mention of 35 USC 101! In other words, courts have assumed 35 USC 101 is an invalidity defense for many years when 35 USC 282 listing all defenses says no such thing.
Professor Hricik has an important point. The case law should be subject to the federal statutes it purports to interpret. And there are canons of construction that apply to federal statutes. Professor Hricik appears to use a modified version of a canon that the inclusion of "one" (35 USC 102, 103, and 112) indicates an intent to exclude "the others" (35 USC 101). So the fact many courts have held 35 USC 101 is an invalidity defense over the years does not mean they are right.
See Professor Hricik's post: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
Copyright © 2012 Robert Moll. All rights reserved.