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One aspect of Justice Stephen Breyer’s discomfort with patents, as expressed in his opinion for the Supreme Court in Mayo v. Prometheus and his dissent from the order dismissing certiorari in LabCorp v. Metabolite, is strikingly similar to one of his critiques of copyright law in The Uneasy Case for Copyright, a well-known article he wrote as Professor Breyer more than forty-five years ago. In The Uneasy Case, Breyer argued that the burdens on duplication of technical articles imposed by copyright law restrict the flow of information and prevent scientists from enjoying spillover benefits of published research. His patent opinions on the Supreme Court, too, talk of diminished access to information resulting from intellectual property protection. In this Article, I contend that the parallel that Justice Breyer implicitly draws between the harms of copyright and patent is a questionable one. In particular, Justice Breyer’s opinions on patentable subject matter do not address the notion that inducement of disclosure and dissemination of information is one of the very purposes of patent law, nor the idea that there are many noninfringing uses of information contained in patents. I argue that these omissions may provide an insight into Justice Breyer’s patent law jurisprudence — particularly, the recent reinvigoration of limits on patentable subject matter in his opinion for the Court in Mayo.

To be sure, Justice Breyer’s position can be defended. For even though patent law does not generally place barriers on access to information, claims like those at issue in Mayo and LabCorp may create narrow, subtle information-flow problems through recitation of mental steps at the point of the invention’s novelty. I argue, however, that these problems can be solved by applying correspondingly narrow rules of novelty or claim construction to invalidate such patents or to limit their scope, making resort to the overbroad rule announced in Mayo unnecessary.

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GWU Law School Public Law Research Paper No. 2017-17; GWU Legal Studies Research Paper No. 2017-17

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