Patentable,
statutory or
patent-eligible subject matter is subject matter which is susceptible of
patentA patent is a set of exclusive rights granted by a state to an inventor or their assignee for a limited period of time in exchange for a 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
noveltyNovelty 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 nonobviousnessThe 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....
,
utilityIn United States patent law, utility is a patentability requirement. Today, the utility requirement is the lowest bar and is easily met. Largely utility is used to prevent the patenting of inoperative devices such as perpetual motion machines...
and
industrial applicabilityIn 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
patentabilityWithin 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 OfficeThe Canadian Intellectual Property Office is the patent, trademark, and copyright administration body of Canada. Structurally 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 ConventionThe 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 nonexhaustive 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
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 lawCase law is the reported decisions of selected appellate and other courts 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 EPODecisions 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 in order to be an invention within the meaning of ".
Patentable subject-matter considerations also intervene again at a secondary level, during the
inventive stepThe 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....
examination.
T 641/00T 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 258/03T 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 AppealThe 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 641/00T 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) and
T 258/03T 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), 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.The United States Code is a compilation and codification of the general and permanent federal law of the United States. It contains 50 titles and is published every six years by the Office of the Law Revision Counsel of the US House of Representatives.- Codification process :The official text of...
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.
As of October 2005, the
United States Patent and Trademark OfficeThe 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 currently based in Alexandria,...
(USPTO) has issued interim guidelines for patent examiners to determine if a given
claimPatent claims are usually in the form of a series of specified elements and corresponding limitations, or more precisely noun phrases, following the description portion of the invention in a patent or patent application. The claims define, in technical terms, the extent of the protection conferred...
ed invention meets the statutory requirements of being a useful process, manufacture, composition of matter or machine (35 USC 101). These guidelines assert that a process, including a process for doing business, must produce a concrete, useful and tangible result in order 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). Some feel that the PTO guidelines may have to be withdrawn and new ones issued, because on October 30, 2008, in
In re BilskiIn re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , is 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 Supreme Court of the United States granted certiorari on June 1, 2009...
, the US Court of Appeals for the Federal Circuit held that the "useful, concrete, and tangible" test for patent-eligibility is incorrect and that
State StreetState Street is a common American street name. Like Broad Street and Main Street, State Street may refer to a main artery through a city.Notable State Streets in the US include:*State Street , a major street in Boston, Massachusetts....
is no longer valid legal authority on this point.
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
InternetThe Internet is a global system of interconnected computer networks that use the standardized 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 35 USC § 101) do not include intangible, incorporeal, transitory entities.
The USPTO was prompted to issue the guidelines by a recent decision by their
board of appealsThe 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 Michael R. Fleming.-Structure:...
,
Ex Parte LundgrenEx 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" in order to satisfy the requirements of 35 USC 101. They must, however, produce a concrete, useful and tangible result. As indicated above, however,
In re BilskiIn re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , is 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 Supreme Court of the United States granted certiorari on June 1, 2009...
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
algorithmIn mathematics, computing, linguistics, and related subjects, an algorithm is an effective method for solving a problem using a finite sequence of instructions. Algorithms are used for calculation, data processing, and many other fields....
s arose out of three
Supreme CourtThe Supreme Court of the United States is the highest judicial body in the United States, and leads the federal judiciary. It consists of the Chief Justice of the United States and eight Associate Justices, who are nominated by the President and confirmed with the "advice and consent" of the Senate...
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, all involving computer-software related technology, were:
Gottschalk v. BensonGottschalk v. Benson, was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm...
,
Parker v. FlookParker v. Flook, was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent-eligible only if the implementation is novel and unobvious. The algorithm itself must be considered as if it were part...
, and
Diamond v. DiehrDiamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
. The Supreme Court considered a fourth case during this period, in which the patent-eligibility of business-method software was challenged, but the Court decided the case on the alternative ground that the claimed invention was unpatentable because it was obvious. These four cases are the only Supreme Court decisions on the merits of whether a claimed invention in the computer-software field was entitled to a patent.
The first member of the trilogy was the 1972 decision in
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 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.
The second member of the trilogy was the 1978 decision in
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 artPrior 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 dissectionAnalytic 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.
In the third member of the trilogy, the 1981 decision in
Diamond v. DiehrDiamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
, 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.
The three cases of the trilogy can be harmonized on the basis of the main principle being, as
Flook ruled, when a claimed implementation of an idea or principle is concededly old or departs from the prior art in only a facially trivial way, the claim is patent-ineligible because the principle cannot confer patentworthiness (as
Nielson and
Morse said, and
Flook reaffirmed, it must be treated as if in the prior art). In
Diehr, Diehr’s process satisfied this test because, on the record before the Court, the device-implementation was not concededly or facially trivial, as it was in
Flook.
Diehr accordingly had no occasion to overrule
Flook, although the
Flook dissent apparently saw the facts differently (Justice Stevens seems to have considered the implementation facially trivial, although the majority did not). But seeing the facts differently does not make the legal principle guiding the majority and minority opinions different, and the opinions can be reconciled on the basis of the legal if not the factual analyses.
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 computersSoftware 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...]
;
business methodBusiness 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 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 OfficeThe 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 currently based in Alexandria,...
and other patent offices.
Further reading
- Peter Mole, Economics, ethics and the subject-matter definition of the EPC, The CIPA
The Chartered Institute of Patent Attorneys is the British professional body of patent attorneys. It was founded in 1882 as the Chartered Institute of Patent Agents and incorporated by Royal Charter in 1891...
Journal, April 2003
See also
- 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...
- 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...]
- Software patents under TRIPs Agreement
The WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights , particularly Article 27, is occasionally referenced in the political debate on the international legal framework for the patentability of software, and on whether software and computer-implemented inventions should be...
- Software patents under the European Patent Convention
The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973...
- Software patents under United Kingdom patent law
There are four over-riding requirements for a patent to be granted under United Kingdom patent law. Firstly, there must have been an invention. That invention must be novel, inventive and susceptible of industrial application...
- Software patents under United States patent law
Software or computer programs are not explicitly mentioned in United States patent law. In the face of new technologies, decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit in the latter part of the 20th century sought to redefine the boundary...
- Computer programs and the Patent Cooperation Treaty
- 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 only if it is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a...
(United State patent law)
External links