Patent Attorney and Founder
Patent subject matter eligibility isn’t the only criteria you will have to overcome for approval, but it’s one of the most important.
Unfortunately, far too many people have wasted a lot of time pursuing IP protection for ideas that, while novel and unique, don’t meet the subject matter-eligible status that they’ll need to receive a patent. That’s because there are certain types of ideas that, no matter what, will never be patentable due to existing case law.
It’s not possible to protect all intellectual property because sometimes, doing so would set a dangerous precedent. Imagine, for example, if Henry Cavendish had been permitted to patent the formula for water in 1766 when he isolated it down to H2O. Someone holding ownership over a product that every person in the world needs, even though they didn’t actually create it, is dangerous.
Subject matter eligibility exists to prevent situations like that, though it’s not always clear what disqualifies one idea and allows another.
The Basics of Patent Subject Matter Eligibility
What is patentable is so wide and varied that it’s perhaps faster to go over what is not eligible.
Among the criteria, patentable ideas must be novel, non-obvious, and serve a useful purpose.
So, for example, if you were to invent a spaghetti strainer with heart-shaped holes, that would not meet the criteria. While it may be unique compared to other strainers, it does not meet the “non-obvious” standard, nor would the heart-shaped holes make it more useful than other options. Of course, the strainer example is relatively simplistic. In reality, there’s a lot of nuance to these three criteria.
Meanwhile, a fourth requirement—subject matter eligibility—is less nuanced. There are just some ideas that will never be patentable. The US Supreme Court has broadly defined three:
What can’t be patented?
Laws of nature or products of nature |
These are events that occur regularly in society or nature and are not patentable, even if a person can claim to be the first individual to understand it. For example, when Sir Isaac Newton discovered gravity, he couldn’t patent it even though he was the first one to understand its mechanics. It was a law of nature that happened no matter what. He was just the first to define it. The same goes for products of nature; i.e., you couldn’t patent a tornado or the ocean. |
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Physical phenomena |
Physical phenomena are things like genes, hormones, or chemicals that we extract from naturally occurring items. No one created these things. They just exist and were later discovered. If nothing new is made in the discovery of the item, it falls under physical phenomenon and is, therefore, not patentable. There is a lot of overlap between physical phenomena and products or laws of nature, so they’re often both cited in a case of patent denial. |
Abstract concepts |
An abstract concept is only theoretical and provides no meaningful way to accomplish the idea. When submitting a patent, you’ll have to give some kind of proof that your vision is possible. That could include a prototype, blueprints, patent drawings, or simply a written explanation of how it works. |
For a more in-depth analysis of how patent eligibility works, read here.
Any idea that falls under one of the above three categories will not receive a patent. However, there is some room to argue on subject matter eligibility. For example, if your idea makes a material change to one of these categories—or provides a way to harness one more efficiently—it may be granted a patent.
Finding Exceptions to Subject Matter Eligibility Issues
A good example of a subject matter eligibility exception comes from the invention of the electric light and its creator Humphry Davy—not Thomas Edison, as is commonly thought. Davy created the earliest version of the lightbulb, the Electric Arc lamp. When doing so, he harnessed a naturally occurring phenomenon, electricity. He used a battery to create it on demand and then routed it into a piece of carbon that produced light. While he was using a product of nature, he was inventing a new and unique way of leveraging it.
Unfortunately, Davy’s creation wouldn’t meet the “useful” criteria of patentability as it was short-lived and far too bright to serve any practical purpose. But it did set the stage for future testing and the eventual development of Thomas Edison’s light bulb.
A more recent example comes from something called gene patenting. The Supreme Court ruled in 2013 that isolated genes, in and of themselves, could not be patented because they were products of nature. However, the ruling allowed for patenting of DNA sequences that have been altered by human beings, like something called complementary DNA (cDNA) which is lab-made and used frequently in research.
These instances are solid examples of exceptions to patent subject matter eligibility rules which may have been overlooked before. You may also qualify for an exception if you’re using an unpatentable item as part of your work, not its entire basis. However, the nuances can be quite complex, which is why it’s important to work with an experienced patent attorney.
If you’re ready to take the next step in protecting your intellectual property, feel free to reach out to us. We even offer a courtesy copy of our book, Bold Ideas: The Inventor’s Guide to Patents, to answer all your questions. Contact us at 800-849-1913 or visit our contact page to learn more about how we can help you.