Abstract
The Supreme Court has recently reinvigorated the law of patentable subject matter. But beneath the headlines proclaiming the return of limits to patent eligibility, a more profound shift has taken place: central claiming is reborn.
The Court’s eligibility cases are significant outliers compared to today’s run-of-the-mill patent law because claim language plays little role in their analyses. In our modern peripheral claiming system, the claim language is the near-exclusive guide to the patent’s boundaries. But in its earliest days, our patent system pursued a central claiming approach, in which the inventor’s actual work determined the patent’s scope. The Court’s eligibility cases focus on the inventor’s actual contribution to the field, precisely as a central claiming inquiry would. And they can be better understood once this return to central claiming is revealed.
Indeed, the shift to central claiming points the way toward a principled approach to eligibility. The eligibility requirement aims to prevent patents from covering certain kinds of prohibited subject matter: laws of nature, natural phenomena, and abstract ideas. But every invention, at some level of abstraction, applies ineligible subject matter. In a peripheral claiming system, this levels-of-abstraction problem could lead courts to simply deem all claims eligible (as occurred for nearly thirty years) or all claims ineligible (as some fear will happen today). Central claiming offers a solution by focusing on what the inventor added to the storehouse of knowledge. It is that contribution, rather than some abstraction from the claim language, that guides the eligibility analysis.