ABSTRACT
Can someone patent the mathematical formulae that lie at the root of advances in artificial intelligence? What about the discovery of biological mechanisms that make certain drugs work? These questions are governed by the doctrine of patentable subject matter, which excludes ‘laws of nature, natural phenomena, and abstract ideas’ from patents. In a watershed series of recent cases, the Supreme Court reinvigorated the doctrine. The Court’s intervention has inspired a robust debate involving legislators, administrators, judges, and scholars. But this debate has focused on the Court’s new test for how to exclude abstract ideas while accepting the premise that they should be excluded.
This Article contests that virtually uncontested premise. Its thesis is that patent law’s exclusion of abstract ideas rests on a weak foundation. The Supreme Court’s rationale for the exclusion is that abstract ideas are ‘basic tools’ or ‘building blocks’ of future scientific discovery, so patenting them would hamstring downstream innovation. But this rationale is faulty because the building-block potential of abstract ideas signifies not just the cost of monopolizing them but also the benefit of incentivizing them. The fact that an idea can serve as a tool for future innovation shows the importance of incentivizing the idea, which is what patents aim to do.
So, for the Court’s rationale to hold, it must be true that as an invention becomes more abstract, the costs of patent protection increase at a greater rate than its benefits such that, beyond some level of abstractness, the costs outweigh the benefits. In other words, the cost and benefit curves must cross once (the ‘single-crossing condition’). But the Court has never articulated a reason – and there is no reason – to think that this necessary condition holds.
This conclusion has profound implications for our understanding of patent law: It shows that a longstanding article of faith is not well-grounded. This pessimistic verdict does not lead to a wholesale rejection of the Court’s reengagement with patentable subject matter, but it provides a new framework for assessing the doctrine, suggesting substantive and procedural reforms.
Shahshahani, Sepehr, Against the Abstract-Ideas Exclusion (May 4, 2025), 40 Berkeley Technology Law Journal (forthcoming 2025).
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