An inventors Guide to patent eligibility
Likely you have heard some discussion of the changes to patent eligibility and various 101 issues. This guide will help you understand what is happening so you can talk to your IP lawyer intelligently and know when he is trying to pull the wool over your eyes.
IntroductionLikely you heard some discussion of the changes to patent eligibility and various 101 issues. You may have heard people say things like all computer inventions are unpatentable or the drug industry is being destroyed. This guide will help you understand what is happening so you can talk to your patent attorney intelligently and know if he is trying to pull the wool over your eyes.
Section 101 of the patent act lists the types of inventions that can be patented. Machines, composition of matter, processes, manufactures or any new and useful improvement to a machine, process, manufacture or composition of matter can be patented. This covers most everything. Based on their interpretation of patent law courts have added exceptions for abstract ideas, laws of nature, and natural phenomena. This means that something could be a machine, process, manufacture, composition of matter or an improvement to one of the foregoing and not eligible for patenting if it is an abstract idea, a natural phenomena or a law of nature.
The rest of the sections will discuss what you need to know about each of these exceptions
Natural PhenomenaThis is perhaps the easiest of the exceptions to understand, though they are all somewhat difficult to understand. The Court has decided that chemicals, plants, etc that exist in nature and are not "made by man" are unpatentable. No going to the rain forest finding a cure for cancer and patenting it. No taking a plant known to cure a disease, isolating the responsible chemical and patenting it. This is largely why drug companies no longer look for drugs in nature.
There techniques to get around this exception. One being claiming using the natural product for a particular purpose rather than simply claiming the product itself. If you have a natural product based invention make sure your attorney is informed about the natural product exception by asking him about it.
Laws of NatureThe law of nature exception is slightly more complicated. At first the court described this as applying to such things as E=mc squared and other mathematical equations. No one tried or tries to patent these however. The Court has begun to use this exception to make patenting of diagnosis and personalized medicine techniques impossible. The correlation of a chemical, a gene, or a bacteria with a disease or the correlation of a drug amount with a successful treatment is considered a law of nature (or sometimes a Natural Phenomena) and the rest of the invention is ignored. The presence of the law of nature makes the invention, no mater how novel or useful, unpatentable.
If your invention involves measuring a chemical, a gene, or a bacteria make sure your lawyer is aware of the Law of Nature exception and explains to you in detail how they plan to get around it.
Abstract IdeasPerhaps the hardest of the judicial exceptions to understand is the Abstract Idea exception. No court has really defined this exception and the Supreme Court has stated they see no need to do so. It must be said however that the Court does not mean simply that ideas have to be specific to be eligible for patenting. The Court has used the abstract idea exception to find very specific and well defined inventions unpatentable.
The abstract idea exception is used most often to invalidate computer based or business method patents. If your invention is in some way computer based or if your invention is a new method of doing business make sure your attorney is aware of the Abstract idea exception and that he gives you a plan to get around it.