Competing Visions of Patentable Subject Matter


Although many people disagree about whether various types of subject matter (e.g. human genes, diagnostic tests, or business methods) are or should be patentable, they ostensibly agree on the overarching framework within which the issue is analyzed. Almost everyone in legal debates—in courts and in the scholarly literature—talks about patentable subject matter (PSM) in the consequentialist terms of promoting innovation and of maximizing utilitarian benefits while minimizing utilitarian costs. A solution to PSM debates is thus understood to involve merely the collection of better data and more empirical evidence to answer the utilitarian-economic question.

This Article challenges the widely shared premise. The ostensible consensus that everyone agrees that PSM law is about answering an agreed-upon utilitarian-economic question is an illusory one. In reality, debates about PSM law are not just about differences in empirical intuitions over economic costs and benefits; they are more importantly about differences in moral values, as well as about the relative weight of moral concerns vis-à-vis utilitarian concerns in patent law. Better data and more evidence will not resolve what is in reality a debate over first- and second-order normative commitments. Without candidly acknowledging and addressing the value differences that underlie PSM debates, the law in this area will remain an intractable mess.