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103 Cornell L. Rev. 645 (2017-2018)
The Central Claiming Renaissance

handle is hein.journals/clqv103 and id is 673 raw text is: THE CENTRAL CLAIMING RENAISSANCE Andres Sawickit The Supreme Court has recently reinvigorated the law of patentable subject matter. But beneath the headlines pro- claiming the return of limits to patent eligibility, a more profound shift has taken place: central claiming is reborn. The Court's eligibility cases are significant outliers com- pared to today's run-of-the-mill patent law because claim lan- guage plays little role in their analyses. In our modern peripheral claiming system, the claim language is the near- exclusive guide to the patent's boundaries. But in its earliest days, our patent system pursued a central claiming approach, in which the inventor's actual work determined the patent's scope. The Court's eligibility cases focus on the inventor's actual contribution to the field, precisely as a central claiming inquiry would. And they can be better understood once this return to central claiming is revealed. Indeed, the shift to central claiming points the way toward a principled approach to eligibility. The eligibility requirement aims to prevent patents from covering certain kinds of prohib- ited subject matter: laws of nature, natural phenomena, and abstract ideas. But every invention, at some level of abstrac- tion, applies ineligible subject matter. In a peripheral claiming system, this levels-of-abstraction problem could lead courts to simply deem all claims eligible (as occurred for nearly thirty years) or all claims ineligible (as some fear will happen today). Central claiming offers a solution by focusing on what the inventor added to the storehouse of knowledge. It is that con- t Associate Professor, University of IVIiami School of Law. For superb com- ments and conversations, I would like to express my gratitude to Jonas Anderson, Christopher Beauchamp, Bernard Chao, Andrew Dawson, John Duffy, Patrick Gudridge, Paul Gugliuzza, Tim Holbrook, Osamudia James, Dmitry Karshtedt, Lili Levi, Laura Pedraza-Farifia, W. Nicholson Price, Jason Rantanen, Daniel Ravicher, Greg Reilly, and Alexandra Roberts, as well as participants at the 2017 JIPSA Workshop at The Ohio State University, the IP Scholars Conference 2017 at Cardozo Law School, and the Vanderbilt IP Scholars Roundtable IV. For excellent research assistance, I thank Colby Barton, Stephanie Erickson, and James Va- lencia. Many thanks to the editors of the Cornell Law Review, whose comments and suggestions did much to improve the finished product. This Article also owes a significant debt to the Honorable Robert D. Sack, who emphasized for me the value in trying to read opinions in the best possible light. Finally, I could not have written this without the support of my wife, Jessica, who was central in motivat- ing the work that went into it. 645

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