Determining the scope of patentable subject matter is highly contentious --- congress left it to the courts to work out

An important corollary to this observation is that the new statute is similarly silent on a variety of controversies that were at the forefront of patent law during the reform process. For example, there is an ongoing and highly contentious question, both in the United States and abroad, regarding the scope of patentable subject matter. Recent judicial decisions, at both the trial and appellate level, have grappled with whether patents should be available for biological materials such as genetic sequences. The Supreme Court and lower courts have considered and reconsidered the availability of patents for so‐​called “business methods” and the proper extent of patents on computer software. These issues were not only under active consideration in the courts, but also in the Patent Office, and commentary on the question has become a cottage industry among academics and members of the practicing bar.

One might have expected Congress to weigh in on these questions, to help resolve the controversy and uncertainty. But with only very slight exceptions, it remained silent on the subject‐​matter question. Given the debates over software and gene patents, the sparse and narrow subject‐​matter changes in the AIA are comparatively trivial. The AIA does change the patent statute to state explicitly that human beings are not to be patentable subject matter, but this as a practical matter is nothing new, as it had been Patent Office policy for literally decades not to issue patents with claims that would encompass human beings. The AIA also precludes from patentable subject matter business methods directed to taxation procedures. But the many other questions involving software patents, or patents regarding genes, or other “products of nature” are left unaddressed by the new statutory provisions.

One might take the legislature’s silence on gene patents, software, and most business methods as tacit approval of such subject matter. Some courts may in fact adopt this position as a matter of statutory interpretation. But the better inference seems to be that the legislature is allowing the judicial interpretive process to play out, entrusting resolution of the problem to the courts. With the Supreme Court actively engaged in the area, having recently decided the Bilski business and computer process case as well as the Prometheus case on diagnostic methods, and potentially contemplating other cases such as the Myriad case on DNA sequence patents, the determination of the specifics of patentable subject matter could be left to the courts to work out.