An Explicit Policy Lever for Patent Scope

Since its inception in 1982, the Federal Circuit has declined to take an overt role in setting patent policy. Dan Burk and Mark Lemley have observed that the court instead implicitly engineers patent policy through selective application of its patentability rules, which operate as "policy levers." Recent decisions on the patentability of diagnostic and therapeutic methods illustrate a significant problem with this approach. By maintaining a façade of adjudicative rule formalism while tacitly manipulating its rules to approximate policy goals, the court perpetuates empirical uncertainty about the patent law's practical effects. This Article proposes that the Federal Circuit use the patentable subject matter doctrine as an explicit policy lever for calibrating patent scope. By prompting litigants to directly address factual questions underlying patent disputes, expressly pragmatic adjudication may serve an information-eliciting function and shed light on longstanding theoretical debates. The Delaware Chancery Court's adjudication of corporate law should serve as a model for the Federal Circuit's adjudication of patent law. This Article identifies queries specifically pertinent to recent and ongoing cases involving medical methods and suggests that the Federal Circuit raise similar empirical questions with respect to software patents, business method patents, and other inventions whose patentability is contested.