Patentable Subject Matter

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In most patent laws, patentable subject matter (or statutory subject matter) is the requirement that an invention, for which patent protection is sought, is of a kind of subject matter that is, by law, allowed patent protection.

This test is one of the fundamental requirements for patentability, along with novelty (patent), inventive step and non-obviousness, and utility (patent), industrial applicability or Manner of Manufacture as defined by the Statute of Monopolies.

Legislations The subject-matter which is regarded as being 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.

European Patent Convention The 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:

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?

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. See : "An invention shall be considered as susceptible of industrial application if (...)", : "An invention shall be considered to be new if (...)", and : "An invention shall be considered as involving an inventive step (...)")

According to the case law of the Appeal procedure before the European Patent Office, 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 ". T 931/95 (Pension Benefit Systems Partnership)

Patentable subject-matter considerations also intervene again at a secondary level, during the Inventive step and non-obviousness 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." T 641/00 (OJ EPO 2003,352; cf headnote I) 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 or revoked as lacking inventive step.

Practice in the United Kingdom Following the 2006 Court of Appeal of England and Wales judgment in Software patents under United Kingdom patent law#Aerotel_v_Telco_and_Macrossan.27s_application, which contains a lengthy discussion of case law in the area, the UKPO has adopted the following test:http://www.patent.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm (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 641/00 (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.

United States Section 101 of Title 35 United States Code 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 Office (USPTO) has issued interim guidelines United States Patent and Trademark Office, Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, OG Notices: 22 November 2005 ( html) for patent examiners to determine if a given claim (patent)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 decision).

The USPTO has reasserted its position that literary works, compositions of music Some new forms of Music_notation#Patents, however, have been patented in the United States. See Music notation#Patents. , 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 USPTO was prompted to issue the guidelines by a recent decision by their Board of Patent Appeals and Interferences, Ex Parte Lundgren. Precedential opinion, Paper No. 78, United States Patent and Trademark Office, Before the Board of Patent Appeals and Interferences, Ex parte Carl A. Lundgren, Appeal No. 2003-2088, Application 08/093,516 April 20, 2004 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.

Computer software as patentable subject matter The mathematical algorithm exception arose out of three Supreme Court of the United States cases commonly referred to as the “Supreme Court Trilogy.” These cases, Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr, represent the only Supreme Court opinions on the patentability of computer software.

The first decision in the trilogy was the 1972 decision of Gottschalk v. Benson. The invention in this case was a method of programming a general-purpose digital computer using a mathematical 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, which derived from such discoveries, were patentable. The Court found that the discovery in Benson was unpatentable since the invention was no more than a mathematical algorithm. 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 or sequence of algorithms. The Court further noted that validating this type of patent would foreclose all future use of the mathematical algorithm. Therefore, like the traditional exceptions to patentable subject matter, the purpose of the mathematical algorithm exception was to encourage development of new technologies by not granting patents that would preclude others from using abstract mathematical principles.

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"; Software patent; Business method patents.

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 notes

Further reading

Peter Mole, Economics, ethics and the subject-matter definition of the EPC, The Chartered Institute of Patent Attorneys Journal, April 2003