Abstraction, Filtration, and Comparison in Patent Law

Last April, I had the good fortune to participate in a symposium at Penn Law School. The symposium gathered a variety of IP scholars to focus on the "historic" kinship between copyright and patent law. That kinship, first identified in Sony v. Universal Pictures, supposedly shows parallels between the two legal regimes. I use scare quotes because it is unclear that the kinship is either historic or real. Even so, there are some parallels, and a collection of papers about those parallels will be published in the inaugural issue of Penn's new Law & Innovation Journal.

My article is about the use of abstraction, filtration, and comparison (a distinctly copyright notion) in patent law. I have cleverly named it Abstraction, Filtration, and Comparison in Patent Law. A draft of the article is now on SSRN. Here is the abstract:

This essay explores how copyright's doctrine of abstraction, filtration, and comparison is being used in patent law, and how that use could be improved. This test, which finds its roots in the 1930s but wasn't fully developed until the 1990s, is one that defines scope for determining infringement. The copyrighted work is abstracted into parts, from ideas at the highest level to literal expression at the lowest. Then, unprotected elements are filtered out. Finally what remains of the original work is compared to the accused work to determine if the copying was illicit.

This sounds far removed from patent law, but there is a kinship, though perhaps one that is not so historic and a bit hidden. The essence of the test is determining protectable subject matter. These same needs permeate patent law as well. This essay explores how the test is implicitly used and should be explicitly used.

With design patents, the test might apply as it does in copyright, with functional elements being filtered out during infringement. Current precedent allows for this filtering, but not clearly or consistently. With utility patents, the abstraction, filtration, and comparison happen earlier, during the test for patentable subject matter. Here, the comparison is with what is conventional or well known. The essay concludes by discussing why the application is different for design and utility patents.

I think the article is interesting and brings some useful insights into how we should think about patentable subject matter, but you'll have to be the judge.