A Technological Contribution Requirement for Patentable Subject Matter: Supreme Court Precedent and Policy

Intellectual Property and Patents

Article Snapshot


Randall J. Bluestone, David J. Kappos and John R. Thomas


Northwestern Journal of Technology and Intellectual Property, Vol. 6, No. 2, pp. 152-170, Spring 2008


This article critiques current attempts to increase the scope of patent coverage by allowing business method patents.

Policy Relevance

Allowing patent protection for business method patents, and other patents allowed under the “usefulness” test, hinders competitors without the benefit of incentivizing innovation. For this reason, either the Supreme Court or regulators should impose the historical standard requiring technological contribution to the relevant field.

Main Points

  • From the time of its inclusion in the U.S. Constitution, patent protection has been robust and able to adapt to new and growing technological innovations, granting patent holders a temporary monopoly over their creations in order to incentivize innovation. Generally, protection was limited to inventions or processes which advanced their field, adding a technological contribution.
  • However, since the Supreme Court’s ruling in Diamond v. Diehr in 1981, the Federal Circuit, which hears the majority of patent cases, has consistently broadened the scope of patents that are eligible for protection. Under the new standard, an invention is eligible for patenting if it achieves a useful, concrete, and tangible result.
  • Under this more lenient standard, new types of patents have been upheld by the Federal Circuit, such as business method patents. These patents protect a way of doing business, not a technological advancement, and the Federal Courts have not justified this expansion in terms of incentivizing continued invention.
  • This new class of patents is alarming because the increased scope of patentable material is not defined. Most human endeavors are “useful” to some degree, and without specific limitations, this new rule undoes the long-standing limits on patent monopolies.
  • These new patents are not restricted to a specific technological contribution and thus are also broader in scope than other previous patent types. Therefore, it is possible to broadly phrase the patent claim in order to block other inventors from finding different solutions to the same problem.
  • In order to avoid the issues associated with this new breed of patents, the old standard, requiring a technological contribution to be shown in order to sustain patentability, should be required. This will prevent the potential issues noted above, and will still maintain the patent regime based on long-standing incentive.


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