- Katherine J. Strandburg, Much Ado About Preemption, 50 Hous. L. Rev. 563 (2012).
“Preemption” has emerged as the leading contender for conceptual grounding of the patentable subject matter doctrine’s exclusion of abstract ideas and natural phenomena from patentability. Despite the Supreme Court’s frequent use of preemption rhetoric, however, the concept cannot provide a satisfactory explanation of the Court’s patentable subject matter jurisprudence or a sound theoretical basis for the doctrine. Patentable subject matter jurisprudence has two distinct threads, one concerned with overly broad impact on downstream innovation and the other based on per se exclusion of abstract ideas and natural phenomena from patentability. Most of the Court’s patentable subject matter decisions apply a per se exclusion analysis. While preemption is conceptually related to the downstream impact thread, the term is misleading even in that context. When preemption rhetoric is employed in the majority of cases, which are based on per se exclusion, it leads to confusion and incoherence. This Article disentangles the preemption rhetoric from the per se exclusion analysis in the Supreme Court’s cases. Per se exclusion analysis necessarily involves two steps: identifying the per se excluded elements in a claim and applying some rule to determine whether additional claim limitations render the claim patentable. The Article identifies these two steps within the Supreme Court’s cases and seeks to prepare the ground for coherent theoretical analysis. Preemption rhetoric is a distraction from important questions that must be answered to give patentable subject matter doctrine a firm theoretical grounding. First, what are the normative bases of the per se exclusions? As the discussion of the cases shows, failing to answer this question leads to seemingly arbitrary (or result-driven) identification of the per se excluded elements in a claim. Second, what rules should be used to determine whether a particular claim incorporating per se excluded elements along with other limitations is patentable subject matter? The current muddle in patentable subject matter analysis is due largely to failure to moor these second-step rules to the normative basis for per se exclusion.