Patentable Subject Matter
Section 101 of the Patent Act sets out the classes of inventions that can be patented:
- Process: A process is a series of steps designed to perform a method. An example of a patent-eligible process would include a method for manufacturing products.
- Machine: A machine is a collection of parts that work together to accomplish a physical task. In other words, a “machine” is synonymous with a “mechanical device.”
- Manufacture: An article of manufacture covers other physical inventions that do not qualify as “machines.” Some examples include electronic components and devices.
- Composition of matter: A composition of matter is a chemical compound or formula that is created by artificial means.
Excluded Subject Matter
Patent law excludes certain subjects from patenting. These exceptions prevent anyone from having exclusive use of certain subject matter. Some of the exclusions for patenting under U.S. patent law include:
- Natural phenomenon: Patents cannot be obtained on natural phenomena such as DNA sequences or naturally occurring chemicals.
- Scientific law: Also called a “law of nature,” scientific discoveries like Einstein’s matter-energy equation are not patentable.
- Abstract idea: An abstract idea is a concept that lacks either a concrete outcome or a concrete way of accomplishing it.
- Algorithm: A mathematical equation cannot be patented. This restriction has been extended to the steps in a software program if the outcome of those steps is mere data.
Patentable inventions must have a specific use under the patent law. Very few inventions fail this requirement. For example, inventions that fail the usefulness test under U.S. patent law include instruments of torture and inventions that are inoperable.
Patentable inventions must be novel under the patent law. Novelty means that the invention as a whole was not known, used, or described in a printed publication before the date of its invention.
Your patent attorney will emphasize two points about novelty. First, U.S. patent law uses a “first inventor to file” priority system. This means that an invention is novel if the invention was not publicly known or used before the first application for the invention was filed by an inventor or the inventor’s patent attorney.
Secondly, an inventor’s actions can be used to reject a patent application for lack of novelty. For example, if an inventor writes about the invention in a journal article or sells the invention before filing the patent application, that disclosure or sale might be used to reject the application for lack of novelty.
Be sure to discuss any pre-filing activity that you may have undertaken already with your patent. Pre-filing disclosures, sale, use, and publication might render your invention unpatentable unless your patent attorney can fit the activity into an exception under the Patent Act.
When U.S. patent law uses the word “obvious,” it does not rely on the dictionary meaning of the word. Rather, obviousness encompasses the principle that an invention should not receive a patent if it is a trivial improvement over the state-of-the-art.
Generally, an invention will be rejected as obvious if it is, as a whole, either:
- An obvious improvement over the prior art, or
- An obvious combination of prior art inventions.
Keep in mind that there are three points a patent lawyer will use to analyze obviousness. Obviousness is judged at the time of the invention. Even if an invention is obvious in retrospect, it may not have been obvious when it was invented.
Secondly, obviousness is measured by a patent attorney by looking at the invention as a whole rather than looking element by element.
Finally, obviousness is determined by a patent lawyer from the viewpoint of someone with ordinary skill in the art. This means that an invention might not be obvious if the improvement or combination would have been obvious only to an expert.