When an
inventor comes up with an invention/idea, the first task is to decide if the
invention/idea is a patent eligible subject matter. Passing the “patent eligible subject matter”
bar is the first requirement in the path to a patent. If you are an entrepreneur inventor, before
you invest money and time to further develop and commercially explore the
invention, you should figure out whether the invention is patent eligible or
not. Obtaining a patent is not
necessarily a requirement for you being able to commercially exploit your
“invention.” However, with or without a
patent, your plan for commercialization could be very different.
What is patent
eligible in one country is not necessarily patent eligible in another country. In this series of blog posts, I will provide
a comparison on patent eligible subject matters in various countries. I will try to cover all the major markets
hoping the information will be useful for you in the commercialization of your
invention or idea.
US patent law, 35 USC § 101, describes inventions that
are patent eligible. Here is the text of
the statute:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.
Therefore, in
US, a utility patent will only be granted to these four types of inventions: a process, a machine, a
manufacture, or a composition of matter.
Thinking from an inventor or entrepreneur point of view, these four
categories can be roughly grouped into two types: processes and products.
A process
under §101 is a manner or means of achieving a certain result or arriving at a
certain goal. It could be a process, a method, an act, or an operation, which includes
one or a series of acts or steps to achieve an end result. Examples of processes include a business
method, a process of performing an act, a method of manufacturing an article, a
method of synthesizing a chemical compound, a method for treating a disease, a
method for diagnosing a disease, a surgery method, or process of purifying a
protein.
The
products categories are more tangible and therefore easier to define.
A machine
essentially includes every mechanical
device or combination of mechanical powers and devices to perform some function
and produce a certain effect or result. See Corning
v. Burden 56 U.S. 252 (1854). A machine under §101 could be a device, an apparatus, a system, or
a combination of devices. It may consist
of fixed or moving parts that work together to form some function. Examples of machines include a needle, a
battery, an endoscope, an apparatus for performing an act, a pencil sharper, a
wash machine, a car, or an airplane.
A manufacture
is “the production of articles for use from raw or prepared materials by giving
to these materials new forms, qualities, properties, or combinations, whether
by hand-labor or by machinery.” Diamond
v. Chakrabarty, 447 U.S. 303, 308 (1980) (citing American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11
(1931)). It is distinguished from a thing that is a product of nature. Examples
of manufactures include a chair, a tire, a chemical compound, an isolated
natural compound, a synthetic gene, an isolated gene (?), a synthetic protein,
an antibody, a bioengineered microorganism, the Oncomice, or a polymer.
A composition
of matter “includes all composite articles, whether they be results of
chemical union, or of mechanical mixture….” Shell
Development Co. v. Watson, 149 F. Supp 279 (DC Dist) (citation omitted).
Compositions of matter are not limited to any physical form or element: solids,
powders, liquids, and gases all qualify.
They could be the results of chemical union or of mechanical
mixture. Examples of composition of
matters include a polymer composite, a pharmaceutical formulation, a facial
mask formula, or a drink mixture.
In US, the
Leahy-Smith America Invents Act and case laws have excluded the following
categories from patent eligible subject matters:
·
laws
of nature and scientific principles: examples include transitory forms of
signal transmission (for example, a propagating electrical or electromagnetic
signal per se), In re Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d
1495, ___ (Fed. Cir. 2007); electricity, electromagnetic signal, light, relativity
theory, string theory, or the first law of thermodynamics.
·
physical
phenomena and natural phenomena: examples include a naturally occurring
organism, Chakrabarty, 447 U.S. at 308; a new mineral discovered in the
earth, or a new plant found in the wild, sky, cloud, or rainbow.
·
abstract
ideas, disembodied concepts: examples include a computer program per se,
Gottschalk v. Benson.
·
mental
processes, systems that depend on human intelligence alone: examples include a
legal contractual agreement between two parties, see In re Ferguson, 558
F.3d 1359, 1364, 90 USPQ2d 1035, ___ (Fed. Cir. 2009) (cert. denied).
·
disembodied
mathematical algorithms and formulas: examples include a game defined as a set
of rules, addition algorithm, or a linear equation.
·
any
kind of human organism (bioengineered, new human species, or chimeras). See, The Leahy-Smith America Invents Act
(AIA), Public
Law 112-29, sec. 33, 125 Stat.
284 (September 16, 2011).
·
a
mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396,
164 USPQ 46, ___ (CCPA 1969).
· Tax
planning strategies. See,
The Leahy-Smith America Invents Act (AIA).
Thanks for reading.
Connie
