Unpatentable subject matter

What is patentable?

35 U.S.C. §  101 – Inventions patentable

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.

What is unpatentable?

UNPATENTABLE (by statute)

  • Patents “directed to or encompassing a human organism”
  • Tax strategy patents
  • Atomic weaponry
  • National security
  • Medical procedures done by medical practitioners (patentable but not enforceable)

UNPATENTABLE (by court decision)

Laws of nature

  • E=mc2
  • Example: testing blood levels of metabolites, Mayo

Natural phenomena

  • A leaf
  • Example: existing genes, Myriad

Abstract ideas

  • Mere algorithms
  • Example: computer binary conversion, Gottschalk
  • Example: business method of hedging, Bilski
  • Example: using computer to hedge risks of intermediated settlement, like third-party escrow, Alice

ALICE test (page 245):

  1. Is patent claim directed to a patent-ineligible concept?
  2. If so, do additional elements nevertheless transform the nature of the claim to make it patent-eligible?  Look for an inventive concept, either an element or combination of elements that ensures that the patent is significantly than a patent on the ineligible concept itself.

Posted June 20, 2017