Catholic University Law Review


For patent eligibility the Supreme Court continues to rely on its 1947 opinion in Funk Brothers Seed v. Kalo Inoculant. It is one of the most cited cases for patent eligibility and the Supreme Court relies heavily upon it. It forms one of the foundations of the current eligibility test in Mayo v. Prometheus. This article argues that this reliance is in error. Funk is just not appropriate for modern patent eligibility. Interestingly this view is not new. Ever since its appearance in Flook, the Supreme Court’s use of Funk has been dogged by criticism that faults the Court for improperly using an obviousness case for subject matter eligibility purposes. The Court has noted these criticisms but has flatly dismissed them. The critiques persist but they have remained a minority view in the patent academy. This article argues that the critics have had it right all along but that they have not gone far enough. Funk is indeed an obviousness case but that alone has not been sufficient. The missing link is an argument about statutory interpretation. What has not been fully appreciated is that the 1952 Patent Act changed the meaning of the patent eligibility statute. Curiously, this is true even though the literal text of the provision did not change. But once that change is understood, it becomes clear that not only is Funk an obviousness case but more importantly it cannot be a patentable subject matter case. When properly understood, the answer is clear. The Court should no longer cite Funk for patent eligibility