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What Constitutes Patentable Subject Matter

… what every lawyer should know

The Patent Guys, Arthur Peslak and Richard Malagiere wrote this article what constitutes patentable subject matter for the Bergen County Bar Association Intellectual Property Committee

An existing client comes into your office and asks to speak with you about a very important matter…and it’s urgent. You hope that it is a new litigation or proposed deal that will allow you to add value and serve your client with your professional expertise. Ultimately, you find out that the client has come up with – what the client considers – a revolutionary invention or has a “line” on a revolutionary invention in which your client has been asked to invest. Either way, before you refer the client to a patent attorney, you should be able to give the client the “basics” of what constitutes patentable subject matter and keep your hand in on the process going forward. This edition of our “Patent Law…what every lawyer should know” series is intended to allow you to provide the initial advice and orientation to your client.

It’s always best to start from the enabling legislation… and no better enablement than the Constitution of the United States of America. Article 1, Section 8 of the Constitution provides that “The Congress shall have the Power..[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” This section of the Constitution provides the basis for the patent Laws (Title 35).

The current incarnation of the Patent Laws – United States Code Title 35 – codifies the particular statutory sections that flow from Article 1, Section 8 enablement. Specifically, 35 U.S.C. §101 (Inventions patentable) sets out generally what constitutes patentable subject matter.

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 [USCS §§1 et seq]

35 U.S.C. §101

So, there you have it; the four (4) patent-eligible subject patter categories: (i) process, (ii) machine, (iii) manufacture and (iv) composition of matter. Let’s talk about these one at a time and see what they mean when you dig down a little bit. (1)

A Process has been defined by courts over the years as an act, or series of acts or steps. It has also been described as an act, or series of acts, performed upon subject matter to be transformed to a different state of thing. Common examples of patentable processes include, but are not limited to, the following: a method of purifying water used in mining; a method of compressing data on a server or business method implemented on a computer (although this last one would potentially be suspect as being an unpatentable abstract idea, see infra).

Item (ii), a “Machine” has been described as a concrete things, consisting of parts, or of certain devices and combination of services. The United States Supreme Court in the 19th century explained that a “Machine” includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. Common examples of patentable Machines include, but are not limited to, the following: an adjustable wrench, a hinge mechanism for a cabinet or a universal trailer hitch.

Item (iii), a “Manufacturer” has been described as an article produced from raw materials by giving these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery. Common examples of patentable items of “Manufacturer” include, but are not limited to, the following: an integrated circuit board infused with silver by a manufacturing process; gas turbine blades with optimized airfoils to reduce vibration and genetically engineered bacterium used to beak down oil.

Item (iv), a “Composition of Matter” has been described as all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of a mechanical mixture, or whether they be gases, fluids, powders, or solids, for example. Any of the various patented pharmaceutical compounds, a solvent with extraordinary cleaning characteristics or a paint with exceptional ability to stick to surfaces would be an example of a “Composition of Matter”.

So, there are four broad categories of patent-eligible subject matter – (i) Process, (ii) Machine, (iii) Manufacture and (iv) Composition of Matter. Anything that falls under one of these categories is eligible for a patent under §101. However, the United States Supreme Court has identified three specific exceptions to patent-eligibiilty under §101 – (1) laws of nature; (2) physical phenomena and (3) abstract ideas. While these exceptions bar patentability under §101, methods and products employing abstract ideas, physical phenomena and laws of nature to perform a real-world function may well be patentable under §101.

Exceptions (1) laws of nature, prohibits filing a patent application for reducing the physics of the world around us to a law or theorem and seeking protection of that law or theorem. By way of example, Einstein’s theory of relativity or Newton’s law of gravity would not constitute patentable subject matter. Exception (2) physical phenomena, prohibits filing a patent application for things found in nature. By way of example, a new mineral discovered in the earth or a new plant found in the wild would not constitute patentable subject matter. Exception (3) prohibits filing a patent application to protect an abstract idea such as a novel and useful mathematical formula or the intellectual steps employed to accomplish a task.

SOURCE: Popular Mechanics, October 2015

(1) We have omitted citations to case law in this edition because of space limitations. Of course, we hare happy to provide them; just send one of us an e-mail and we’ll provide the case citations.

Please contact us with questions or comments…the Patent Guys

Arthur M. Peslak, Esq. Registered Patent Attorney
Richard Malagiere, Esq. Registered Patent Attorney

The Patent Guys are attorneys in the Intellectual Property Practice Group of the law firm of Gertner Mandel LLC providing legal support for legal, technical & business issues.