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Patentable subject matter
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent 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, inventive step or nonobviousness, utility and industrial applicability, the question of whether a particular subject matter is patentable is one of the fundamental requirements for patentability.
LegislationsThe 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. CanadaAccording to the Canadian Intellectual Property Office (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.[1] European Patent ConventionThe European Patent Convention 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:
then qualifies Art. 52(2) EPC by stating:
(Some further items are excluded under , as formally being not industrially applicable). Practice at the European Patent OfficeUnder , "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:
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. [2] According to the case law of the Boards of Appeal of the EPO, 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 ". [3] Patentable subject-matter considerations also intervene again at a secondary level, during the inventive step examination. T 641/00 (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." [4] 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 (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 [5] or revoked [6] as lacking inventive step. Practice in the United KingdomFollowing the 2006 Court of Appeal 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:[7]
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 (Comvik/Two Identities) and T 258/03 (Hitachi/Auction Method), but it is considered that the end result will be the same in nearly every case.[7] United StatesSection 101 of Title 35 U.S.C. sets out the subject matter that can be patented:
As of October 2005, the United States Patent and Trademark Office (USPTO) has issued interim guidelines [8] for patent examiners to determine if a given claimed 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). The PTO guidelines will obviously have to be withdrawn and new ones issued, because on October 30, 2008, in In re Bilski, 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 Street is no longer valid legal authority on this point. The USPTO has reasserted its position that literary works, compositions of music [9], compilations of data, legal documents (such as insurance policies), and forms of energy (such as data packets transmitted over the Internet), 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, [10] 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 appeals, Ex Parte Lundgren. [11] 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 Bilski 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 trilogyThe exception to patenting algorithms arose out of three Supreme Court 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. Benson,[12] Parker v. Flook, [13] and Diamond v. Diehr.[14] 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.[15] 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.[16] 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. 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.[17] This approach is something like that of analytic dissection 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. Diehr, 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. ControversiesThe 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; business methods. 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 and other patent offices. References and notesFurther reading
See alsoExternal links
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