Patentable subject matter - AbsoluteAstronomy.com

Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent

Patent

A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....

protection. The laws or patent practices of many countries suggest that certain subject matter is or is not something for which a patent should be granted.

Together with novelty

Novelty (patent)

Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....

, inventive step or nonobviousness

Inventive step and non-obviousness

The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....

, utility

Utility (patent)

In United States patent law, utility is a patentability requirement. As provided by , an invention is "useful" if it provides some identifiable benefit and is capable of use...

and industrial applicability

Industrial applicability

In patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this...

, the question of whether a particular subject matter is patentable is one of the fundamental requirements for patentability

Patentability

Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...

Legislations

The subject-matter which is regarded as patentable as a matter of policy, and correspondingly the subject-matter which is excluded from patentability as a matter of policy, depends on the national legislation or international treaty.

Canada

According to the Canadian Intellectual Property Office

Canadian Intellectual Property Office

The Canadian Intellectual Property Office is the patent, trademark, and copyright administration body of Canada. Structurally the CIPO functions as a Special Operating Agency which is associated with Industry Canada....

(CIPO) patents may only be granted for physical embodiments of an idea, or a process that results in something that is tangible or can be sold. This excludes theorems, computer programs per se, or business methods.

European Patent Convention

The European Patent Convention

European Patent Convention

The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...

does not provide any positive guidance on what should be considered an invention for the purposes of patent law. However, it provides in a non-exhaustive list of what are not to be regarded as inventions, and therefore not patentable subject matter:

The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

then qualifies Art. 52(2) EPC by stating:

The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

(Some further items are excluded under , as formally being not industrially applicable).

Practice at the European Patent Office

Under , "European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step." So, four questions need to be assessed:

Is there an invention?
Is the invention susceptible of industrial application?
Is the invention novel?
Does the invention involve an inventive step
Inventive step under the European Patent Convention
Under the European Patent Convention , European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is...

?

The first question "Is there an invention?" is equivalent to: "Is the claimed subject-matter as a whole excluded from the realm of patentable subject-matter?" The invention question or patentable subject-matter question necessarily precedes the three further questions, which cannot be assessed when there is no invention.

According to the case law

Case law

In law, case law is the set of reported judicial decisions of selected appellate courts and other courts of first instance which make new interpretations of the law and, therefore, can be cited as precedents in a process known as stare decisis...

of the Boards of Appeal of the EPO

Appeal procedure before the European Patent Office

Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...

, the question "Is there an invention?" also implicitly implies the further question: "Does the claimed subject-matter have a technical character?" "Having technical character is an implicit requirement of the EPC to be met by an invention to be an invention within the meaning of ".

Patentable subject-matter considerations also intervene again at a secondary level, during the inventive step

Inventive step and non-obviousness

examination. T 641/00

T 641/00

T 641/00, also known as Two identities/COMVIK, is a decision of a Technical Board of Appeal of the European Patent Office , issued on September 26, 2002. It is a landmark decision regarding the patentable subject matter requirement and inventive step under the European Patent Convention...

(Comvik/Two Identities) states that, "An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step." The non-technical features are the ones that are excluded from the realm of patentable subject-matter as a matter of policy. T 258/03

T 258/03

T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office , issued on April 21, 2004. It is a landmark decision for interpreting Article 52 and of the European Patent Convention which built on the principles suggested by the same...

(Hitachi/Auction Method) further developed this test for patentable subject-matter.

Under this test, a patent application or patent which does not provide a technical solution to a technical problem would be refused or revoked as lacking inventive step.

Practice in the United Kingdom

Following the 2006 Court of Appeal

Court of Appeal of England and Wales

The Court of Appeal of England and Wales is the second most senior court in the English legal system, with only the Supreme Court of the United Kingdom above it...

judgment in Aerotel v Telco and Macrossan's application, which contains a lengthy discussion of case law in the area, the UKPO has adopted the following test:

(1) properly construe the claim

(2) identify the actual contribution

(3) ask whether it falls solely within the excluded subject matter

(4) check whether the actual or alleged contribution is actually technical in nature.

The Court decided that the new approach provided a structured and more helpful way of applying the statutory test for assessing patentability which was consistent with previous decisions of the Court.

This test is quite different from the test used by the EPO, as expressed in T 641/00

T 641/00

(Comvik/Two Identities) and T 258/03

T 258/03

(Hitachi/Auction Method), but it is considered that the end result will be the same in nearly every case.

United States

Section 101 of Title 35 U.S.C.

United States Code

The Code of Laws of the United States of America is a compilation and codification of the general and permanent federal laws of the United States...

sets out the subject matter that can be patented:

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.

In October 2005, the United States Patent and Trademark Office

United States Patent and Trademark Office

The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...

(USPTO) issued interim guidelines for patent examiners to determine if a given claim

Claim (patent)

Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

ed invention meets the statutory requirements of being a useful process, manufacture, composition of matter or machine . These guidelines assert that a process, including a process for doing business, must produce a concrete, useful and tangible result to be patentable. It does not matter whether the process is within the traditional technological arts or not. A price for a financial product, for example, is considered to be a concrete useful and tangible result (see State Street Bank v. Signature Financial Group). However, on August 24, 2009, the USPTO issued new interim guidelines so that examination would comport with the Federal Circuit opinion in In re Bilski

In re Bilski

In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...

, which held that the "useful, concrete, and tangible" test for patent-eligibility is incorrect and that State Street
State Street
State Street may refer to:*State Street , Massachusetts*State Street , Illinois*State Street , Wisconsin- See also :*State Street Corporation, a holding company servicing institutional investment clients*State Street Bank v...

is no longer valid legal authority on this point. Instead, the Federal Circuit and the new USPTO guidelines use a Machine-or-Transformation Test

Machine-or-transformation test

In United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies to be considered for patenting if it is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way...

to determine patentability for processes. The Supreme Court determined that the claims in the Bilski case covered non-statutory subject matter as it was too abstract and broad.

The USPTO has reasserted its position that literary works, compositions of music, compilations of data, legal documents (such as insurance policies), and forms of energy (such as data packets transmitted over the Internet

Internet

The Internet is a global system of interconnected computer networks that use the standard Internet protocol suite to serve billions of users worldwide...

), are not considered "manufactures" and hence, by themselves, are not patentable. Nonetheless, the USPTO has requested comments from the public on this position. The Federal Circuit has ruled, in In re Nuitjen, that signals are not statutory subject matter, because articles of manufacture (the only plausible category under ) do not include intangible, incorporeal, transitory entities.

The USPTO was prompted to issue the guidelines by a recent decision by their board of appeals

Board of Patent Appeals and Interferences

The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...

, Ex Parte Lundgren
Ex Parte Lundgren
Ex parte Lundgren is a decision by the United States Patent and Trademark Office board of appeals, i.e. the Board of Patent Appeals and Interferences , that asserts that process inventions do not have to be in the technological arts in order to be patentable in the United States. They do, however,...

. This decision asserted that according to US judicial opinions, inventions do not have to be in the "technological arts" to satisfy the requirements of . They must, however, produce a concrete, useful and tangible result. As indicated above, however, In re Bilski
In re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...

supersedes that legal test (as to the "useful, concrete, and tangible" test). The Bilski majority opinion also rejects the "technological arts" test, although three Federal Circuit judges (Mayer, dissenting, and Dyk and Linn, concurring) stated that they considered being technological an indispensable condition of patent-eligibility.

The algorithm exception and the patent-eligibility trilogy

The exception to patenting algorithm

Algorithm

In mathematics and computer science, an algorithm is an effective method expressed as a finite list of well-defined instructions for calculating a function. Algorithms are used for calculation, data processing, and automated reasoning...

s arose out of three Supreme Court

Supreme Court of the United States

The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...

cases commonly referred to as the "Supreme Court Trilogy" or "patent-eligibility trilogy". This is a designation for three Supreme Court cases decided within a decade on whether, and in what circumstances, a claimed invention was within the scope of the US patent system (that is, was eligible to be considered for a patent grant). The three cases of the trilogy can be harmonized on the basis of when a claimed implementation of an idea or principle is old or departs from the prior art in only a facially trivial way, the claim is patent-ineligible (as Nielson and Morse said, and Flook reaffirmed, it must be treated as if in the prior art).

Gottschalk v. Benson

The invention in this case was a method of programming a general-purpose digital computer using an algorithm to convert binary-coded decimal

Binary-coded decimal

In computing and electronic systems, binary-coded decimal is a digital encoding method for numbers using decimal notation, with each decimal digit represented by its own binary sequence. In BCD, a numeral is usually represented by four bits which, in general, represent the decimal range 0 through 9...

numbers into pure binary numbers. The Supreme Court noted that phenomena of nature, mental processes and abstract intellectual concepts were not patentable, since they were the basic tools of scientific and technological work. However, new and useful inventions derived from such discoveries are patentable. The Court found that the discovery in Benson was unpatentable since the invention, an algorithm, was no more than abstract mathematics. Despite this holding, the Court emphasized that its decision did not preclude computer software from being patented, but rather precluded the patentability of software where the only useful characteristic was an algorithm. The Court further noted that validating this type of patent would foreclose all future use of the algorithm in question. Therefore, like the traditional exceptions to patentable subject matter, the purpose of the algorithm exception was to encourage development of new technologies by not granting patents that would preclude others from using abstract mathematical principles.

Parker v. Flook

The invention in this case was a method of calculating alarm limits by using a "smoothing algorithm" to make the system responsive to trends but not momentary fluctuations in process variables (such as temperature). Because it was conceded that the implementation of the algorithm was conventional, the Court found that the inventor did not even purport to have invented anything on which a patent could be granted. The Court did so on the basis of the principle that the nonstatutory subject matter (the algorithm) must be regarded as already in the prior art

Prior art

Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...

. Therefore, there was nothing left on which a patent could issue. In a case in which a patent was sought on an implementation of a principle (the algorithm), the implementation itself must be inventive for a patent to issue. Since that was not so, the Court held that the patent office had properly rejected Flook's claim to a patent. The Court relied on the decision in Neilson v. Harford, an English case that the Supreme Court had relied upon in O'Reilly v. Morse, for the proposition that an idea or principle must be treated as if it were already in the prior art, irrespective of whether it was actually new or old. This approach is something like that of analytic dissection

Analytic dissection

Analytic dissection is a concept in U.S. copyright law analysis of computer software. Analytic dissection is a tool for determining whether a work accused of copyright infringement is substantially similar to a copyright-protected work....

in computer-software copyright law, although its use in patent law preceded its use in copyright law by a century or more.

Diamond v. Diehr

In this case the Court backed away from the analytic dissection approach, and insisted that patent-eligibility must be decided on the basis of the claim (or invention) considered as a whole. That requirement is found in the statute, but only for section 103 (governing obviousness or inventive step) and not for section 101 (governing patent-eligibility). Despite this difference in emphasis, however, Diehr can be harmonized with Flook and Benson, and the Diehr Court studiously avoided stating that Flook and Benson were overruled or limited.

Bilski v. Kappos

On June 28, 2010, the United States Supreme Court ruled in Bilski v. Kappos
Bilski v. Kappos
Bilski v. Kappos, 130 S. Ct. 3218, 561 US __, 177 L. Ed. 2d 792 , was a case decided by the Supreme Court of the United States holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an...

that Bernard Bilski's patent application for a method of hedging the seasonal risks of buying energy is an abstract idea and is therefore unpatentable. However, it also said that business methods are not inherently unpatentable, and was silent on the subject of software patents. The majority opinion also said that the Federal Circuit's "machine or transformation" test, while useful, is not an exclusive test for determining the patentability of a process. Instead, the Supreme Court reviewed the "Supreme Court Trilogy" described above and said that future decisions should be grounded in the examples and concepts expressed in those opinions. As has been reported, the decision leaves many questions unanswered, including the patentability of many medical diagnostic technologies and software.

Controversies

The question of what should and should not be patentable subject matter has spawned a number of battlegrounds in recent years, setting against each other those in each area supporting patentability, claiming that patents would cause increased innovation and public good, against opponents with views that patentability was being sought only for private good but would do public harm.

Flashpoints have included the patenting of naturally occurring biological material; genetic sequences; stem cells; "traditional knowledge"; programs for computers

Software patent

Software patent does not have a universally accepted definition. One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a "patent on any performance of a computer realised by means of a computer program".In 2005, the European Patent Office...

; business method

Business method patent

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the...

s.

In March 2010, a federal district court judge in the Southern District of New York ruled that purified DNA sequences and the inventions using them are unpatentable. As has been discussed, Judge Sweet relied entirely upon Supreme Court precedent and ignored contrary case law of the Federal Circuit Court of Appeals to conclude that isolated DNA is of the same fundamental quality as natural DNA and is thus unpatentable under section 101 of the Patent Act; and that the method claims of the patents were abstract mental processes that were also unpatentable. His rationale is controversial and his ruling has been appealed to the Federal Circuit.

In the process, different jurisdictions have come to different views as to what should be allowed and what should not.

Patents on business methods have proven to be a particularly controversial type of statutory subject matter. They have been criticized because the patents granted are perceived as being too broad, perhaps due to the difficulty in searching for prior art and recruiting suitably qualified patent examiners who have historically had a science background rather than a business background. Patent applications for business methods are also subject to delays in prosecution at the United States Patent and Trademark Office

United States Patent and Trademark Office

and other patent offices.

External links

Typepad.com, Ex parte Lundgren (U.S. Board of Patent Appeals and Interferences, October 2005), especially the dissent of Judge Barrett, which contains a lengthy presentation of statutory subject matter following page 19.
Patent.gov, UK Patent Office Manual of Patent Practice section on patentability.

The source of this article is wikipedia, the free encyclopedia. The text of this article is licensed under the GFDL.

Legislations

Canada

European Patent Convention

Practice at the European Patent Office

Practice in the United Kingdom

United States

The algorithm exception and the patent-eligibility trilogy

Gottschalk v. Benson

Parker v. Flook

Diamond v. Diehr

Bilski v. Kappos

Controversies

Further reading

See also

External links