1.6 Patent-Eligible Inventions
3 min read•june 25, 2024
Patents protect inventions across four main categories: processes, machines, manufactures, and compositions of matter. These categories cover a wide range of innovations, from chemical processes to smartphones, furniture to pharmaceuticals.
Courts have grappled with distinguishing patentable applications from , especially in software and business methods. Key rulings like State Street Bank, Bilski, and Alice have shaped the criteria for patent eligibility, impacting how inventors protect their innovations.
Categories of Patentable Inventions and Their Characteristics
Categories of patentable inventions
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- involves a series of steps or acts for performing a function or accomplishing a result (chemical processes, business methods, methods of manufacturing)
- consists of concrete parts or devices including mechanical devices, electrical devices, and combinations thereof (engines, tools, computers, smartphones)
- includes articles produced from raw or prepared materials by giving them new forms, qualities, properties, or combinations (clothing, furniture, chemical compositions)
- encompasses all compositions of two or more substances, including chemical compounds, mixtures, and naturally occurring compositions purified from their natural state (pharmaceuticals, alloys, genetically modified organisms)
Patentable Applications vs. Unpatentable Abstract Ideas
Patentable applications vs abstract ideas
- Patentable Applications apply abstract ideas, laws of nature, or natural phenomena to a specific, practical application beyond just an abstract idea implemented on a computer (method for hedging risk in commodity trading, system for managing a life insurance policy)
- Unpatentable Abstract Ideas include fundamental economic practices, methods of organizing human activity, ideas themselves, mathematical algorithms, formulas, equations, and mental processes that can be performed in the human mind or with pen and paper (concept of hedging risk, Pythagorean theorem, method for converting binary-coded decimal numerals into pure binary form)
Court Rulings and the Patentability of Software and Business Methods
Court rulings on software patentability
- (1998) established the "useful, concrete, and tangible result" test for of business methods and software, opening the door for a surge in software and
- (2010) rejected the "machine-or-transformation" test as the sole test for determining patent eligibility of processes, emphasizing that abstract ideas are not patentable without providing clear guidance on distinguishing abstract ideas from patentable applications
- International (2014) established a two-part test for determining patent eligibility of software and business methods:
- Determine whether the claims are directed to an abstract idea
- If so, determine whether the claims include an "" that transforms the abstract idea into a patent-eligible application
- The Alice decision raised the bar for patentability of software and business methods, leading to increased patent invalidations and rejections
Patent Law and the Patent Application Process
Overview of patent law and intellectual property
- is a branch of law that grants inventors exclusive rights to their inventions for a limited time
- The (USPTO) is responsible for examining and granting patents
Patent application process
- Inventors submit a to the USPTO, which includes detailed descriptions and defining the scope of the
- A reviews the application to determine if the invention meets the requirements for patentability
- The examiner may issue rejections or objections, which the inventor can address through amendments or arguments
Key Terms to Review (26)
Abstract Ideas: Abstract ideas refer to concepts, principles, or mental constructs that are not directly observable or tangible. They are general, theoretical notions that exist in the realm of thought rather than physical reality. In the context of patent-eligible inventions, abstract ideas are considered unpatentable subject matter.
Alice Corp. v. CLS Bank: Alice Corp. v. CLS Bank is a landmark Supreme Court case that established a framework for determining whether an invention is patent-eligible under 35 U.S.C. § 101. The case addressed the issue of whether computer-implemented inventions, particularly those involving abstract ideas, can be patented.
Bilski v. Kappos: Bilski v. Kappos is a landmark Supreme Court case that addressed the issue of patent-eligible subject matter, particularly in the context of business methods and abstract ideas. The ruling in this case had significant implications for the scope of patentability in the United States.
Business Method Patents: Business method patents are a type of patent that protects novel and non-obvious methods of conducting business. These patents cover innovative approaches to commercial activities, services, and processes that provide a competitive advantage in the marketplace.
Business method patents are a subset of patent-eligible inventions, which are the focus of section 1.6 of the course material. They represent the application of technology to solve business problems or improve commercial operations in a unique and inventive way.
Composition of Matter: Composition of matter refers to the specific arrangement and makeup of the substances that constitute a physical object or material. It encompasses the chemical elements, compounds, and their relative proportions that make up a particular substance or product.
Intellectual Property: Intellectual property (IP) refers to creations of the mind, such as inventions, literary and artistic works, designs, and symbols, names, and images used in commerce. It is a legal concept that provides exclusive rights to the creator or owner of the IP, allowing them to benefit from their work or investment in a creation.
Invention: An invention is a novel device, method, or process that has been created through human ingenuity and creativity. Inventions are often protected by patents, which grant the inventor exclusive rights to the invention for a limited period of time, encouraging further innovation and technological progress.
Inventive Concept: The inventive concept is the core or essence of a patentable invention. It represents the novel and non-obvious technical solution to a problem that the inventor has created, going beyond just a simple idea or abstract concept. The inventive concept is central to determining whether an invention is eligible for patent protection.
Machine: A machine is a device or system that performs a specific task or function, often involving the conversion of energy into motion or work. Machines are fundamental components in the context of patent-eligible inventions, as they can represent novel and useful applications of technology.
Machine-or-Transformation Test: The machine-or-transformation test is a key concept in determining patent-eligible subject matter. It establishes that an invention is patent-eligible if it is tied to a particular machine or apparatus, or if it transforms a particular article into a different state or thing. This test helps distinguish between abstract ideas, which are not patent-eligible, and concrete applications of those ideas, which may be patentable.
Manufacture: Manufacture is the process of transforming raw materials or components into finished goods or products through the application of labor, machinery, tools, and various production techniques. It is a crucial aspect of the patent-eligible inventions landscape, as the creation and production of new and useful products are often at the heart of patentable innovations.
Mayo Test: The Mayo test, also known as the 'Mayo framework', is a key concept in the context of patent-eligible inventions. It provides a framework for determining whether an invention is eligible for patent protection by assessing whether the claimed invention is directed to a patent-ineligible concept, such as a law of nature, natural phenomenon, or abstract idea.
Non-Obviousness: Non-obviousness is a critical criterion for patentability that requires an invention to be more than just a trivial or obvious advancement over existing technology. It is a key component in determining the eligibility and validity of a patent application.
Novelty: Novelty is a fundamental requirement for obtaining a patent. It refers to the uniqueness and originality of an invention, ensuring that it has not been previously disclosed or made publicly available in any form before the patent application is filed.
Patent Application: A patent application is a formal document filed with a patent office to request the grant of a patent for an invention. It outlines the details of the invention and provides the necessary information for the patent office to evaluate the invention's patentability based on criteria such as novelty, non-obviousness, and usefulness.
Patent Claims: Patent claims are the legal statements within a patent document that define the scope and boundaries of the invention. They specify exactly what the inventor is claiming as their new and useful invention, which is the core of the patent protection.
Patent Examiner: A patent examiner is a professional employed by a patent office, such as the United States Patent and Trademark Office (USPTO), who is responsible for reviewing and evaluating patent applications to determine if they meet the legal requirements for obtaining a patent. They play a crucial role in the patent application process, ensuring that only inventions that are novel, non-obvious, and useful are granted patent protection.
Patent Law: Patent law is a set of rules and regulations that govern the protection of inventions and innovations. It provides inventors with exclusive rights to their creations for a limited period, incentivizing the development of new technologies and products that benefit society.
Patent-Eligible Subject Matter: Patent-eligible subject matter refers to the types of inventions and discoveries that can be protected by a patent under U.S. patent law. This term is crucial in understanding the scope and limitations of what can be patented, which is a key aspect of intellectual property rights.
Patentability: Patentability refers to the set of criteria and requirements that an invention must meet in order to be eligible for patent protection. It is a fundamental concept in the field of intellectual property that determines which inventions can be granted a patent by the relevant authorities.
Prior Art: Prior art refers to the existing body of knowledge and technology that is publicly available prior to the filing of a patent application. It is a crucial concept in the patent system, as it determines the novelty and non-obviousness of an invention, which are key requirements for obtaining a valid patent.
Process: In the context of patent-eligible inventions, the term 'process' refers to a series of steps or actions carried out to achieve a particular result or outcome. It is one of the four categories of inventions that can be patented under U.S. patent law, along with machines, manufactures, and compositions of matter.
Software Patents: Software patents are intellectual property rights granted to inventors of computer programs or software-based inventions. These patents provide legal protection for the unique algorithms, functions, and implementations of software-driven technologies, allowing inventors to exclusively use or license their innovations for a limited period of time.
State Street Bank & Trust Co. v. Signature Financial Group: State Street Bank & Trust Co. v. Signature Financial Group was a landmark 1998 U.S. Supreme Court case that significantly impacted the scope of patent-eligible subject matter in the United States. The ruling established a new test for determining whether an invention is eligible for patent protection, focusing on the practical application and usefulness of the invention rather than its underlying principles.
United States Patent and Trademark Office: The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents and registering trademarks in the United States. It plays a crucial role in the protection and promotion of intellectual property rights, which are essential foundations for innovation and economic growth.
Utility Patents: Utility patents are the most common type of patent granted in the United States. They protect the functional, utilitarian aspects of an invention, covering the way an invention is used and works. Utility patents play a crucial role in America's uniquely democratic patent system and the determination of patent-eligible inventions.