III. What Can Be Patented

III.A. Basic Requirements

The requirements for a patent are given in Section 101 of the Patent Act:

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. {FN4: 35 U.S.C. §101}

This language remains essentially unchanged from the Patent Act of 1793, except for replacing the word “art” with the more up-to-date term “process.” (In Section 100, a process is defined as a “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” {FN5: 35 U.S.C. §100(b)} )

“Whoever invents” means that patents are granted to inventors, not to the companies that employ them, although the invention is generally assigned by the inventor to the employer. There is no automatic “work for hire” provision in the Patent Act, in contrast to the Copyright Act, although under common law the employer may have a “shop right” to use an invention that was developed using its resources. And in cases where it is clear that a person was employed specifically to invent the invention claimed in the patent, a court may find that there is an implied contract to assign the rights to the invention to the employer.

“Invents or discovers” requires that the patentee be the actual creator and not just the first person to come upon something that already exists, even though “discovers” makes it seem as though a person can get a patent on some naturally-occurring substance if he or she was the first person to find it. But courts have consistently held that one cannot get a patent on laws of nature or natural phenomena, even if nobody else has identified them before. Of course, one can get a patent on a new use for a law of nature or natural phenomenon, since any new invention has to follow the laws of nature.

The invention must also be “useful.” Usefulness, or “utility,” is not a hard test, but simply means that the invention does something desirable. The Patent Office invariably rejects applications for inventions that appear to be perpetual motion machines. A perpetual motion machine is one of the few inventions for which the Patent Office requires an operative model for the examiner to review. (Presumably, if the model does in fact run forever without additional energy, a patent would be granted.)

A more common example of an application that is rejected because the invention lacks utility is an application for a composition of matter with no known use other than the investigation of the properties of the composition. The same reason was used recently in rejecting an application filed by the National Institutes of Health for a collection of DNA sequences that had been isolated and identified by its investigators. Because the genetic meaning of the sequences was not known at the time of the application, there was no utility shown for the invention and the application was rejected. (The question of whether these naturally-occurring sequences were an invention was not addressed.)

Section 101 requires that the invention also be “new.” The concept of a new invention has two different aspects. First, the invention must be “novel,” which means that it has never existed before. But beyond that, it must not be “obvious” in light of what is known at the time of its invention. These concepts are key to determining whether a patent will be issued or is valid and will be discussed in detail later.

Patents can be granted for a “machine,” or mechanical device; a “composition of matter,” or chemical composition or other substance; a “process,” or method of doing something; or a “manufacture,” which is a catch-all category described in the congressional report that accompanied the passage of the Patent Act in 1952 as “anything under the sun that is made by man.” {FN6: Sen. Rep. No. 82-1979 at 5, H.R. Rep. No. 82-1923 at 6 (1952)} Patents can also be granted on an improvement to something in one of these categories. Essentially, anything technological is patentable subject matter. It is not necessary to state what category the invention falls into, although it is generally obvious.

Statutory subject matter must, of necessity, be expressed in broad terms. Because patents are granted for new technology, it is not possible for Congress to enumerate specific categories (such as software-based inventions) in the patent statutes. Such enumeration would necessarily mean that truly pioneering inventions that define a new field could not be patented, since their field would be added by Congress only after it was recognized. This would clearly be an unfair and undesirable result, and is prevented by the broad sweep of the statute. The same language has served for over 200 years, despite dramatic changes in technology.

III.B. Exceptions To The Broad Classes

Though the broad language of Section 101 does seem to cover “anything under the sun that is made by man,” there are a number of exceptions that are created by other statutes or by court decisions interpreting the language. A statutory exception prohibits patenting “any invention, or discovery which is used solely in the utilization of special nuclear material or atomic energy in an atomic weapon.” {FN7: 42 U.S.C. §2181(a)}

III.B.1. Laws of Nature

Laws of nature, natural phenomena, and naturally-occurring products are not patentable. Newton could not have received a patent on gravity nor Einstein on E=MC². That is because neither was the “inventor” of the law or product of nature. Even though the Patent Act uses the phrase “invents or discovers,” many court decisions have held that a naturally-occurring product cannot be patented, even by the person who first discovers it. To allow such a patent would allow the discoverer to control the making of the product, even though it happens naturally. It would remove the product from the public domain, contrary to the principles of patent law.

An alternative explanation of why first discoverers of naturally-occurring products, laws of nature, or natural phenomena cannot receive a patent on their discoveries is that the discoveries are not new processes, machines, manufactures, or compositions of matter. They may not have been known, but they existed before their first discovery.

One can receive a patent on a machine, manufacture, or composition of matter that is based on a law of nature. All machines must obey the laws of physics in their operation; compositions of matter must follow the laws of chemistry. One might even receive a patent on a naturally-occurring product that is changed to a substantially-different form, such as a biologically-pure strain of a microorganism. One can certainly receive a patent on a new use for a naturally-occurring product, although that patent would protect only the use and not the product itself.

III.B.2. Abstract Ideas

Abstract ideas, such mathematical formulas, are not patentable. They are neither a process, machine, manufacture, nor composition of matter. They lack utility, since they have no particular use, much like a composition of matter whose uses are unknown.

The application of an abstract idea toward the solution of a problem results in something that is no longer an abstract idea. It could be a product (machine, manufacture, or composition of matter) based on the abstract idea or a process that employs the abstract idea to achieve a desired result, such as transforming a composition of matter to another form. Such applications of abstract ideas can be patentable if they are novel and nonobvious.

III.B.3. Mental Processes

A number of cases, such as In re Abrams, {FN8: 188 F.2d 165, 89 USPQ 266 (1951)} have raised the question of whether a mental process is statutory subject matter. At first reading of Section 101, it would seem that the answer is clearly yes because the four categories of statutory subject matter specifically include processes. The matter is not so simple. In the classic case of Cochrane v. Deener, {FN9: 94 U.S. 780 (1876)} decided in 1876, the Supreme Court stated:

A process is a mode of treatment of certain materials to produce a given result. It is an act, or series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. {FN10: 94 U.S. at 788}

The question is whether this is an exclusive definition of a process, saying that only acts that transform something are processes, or an inclusive definition, saying that there may be other types of processes in addition to those that transform something. This question has not been completely resolved, although AT&T v. Excel Communications {FN11: 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999)} indicates that the definition is inclusive:

The notion of “physical transformation” can be misunderstood. In the first place, it is not an invariable requirement, but merely one example of how a mathematical algorithm may bring about a useful application. As the Supreme Court itself noted, “when [a claimed invention] is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of Section 101.” The “e.g.” signal denotes an example, not an exclusive requirement. {FN12: 172 F.3d at 1358-1359, 50 USPQ2d at 1452 (citations omitted)}

A better way of viewing mental steps is that a process that involves steps that require a subjective or aesthetic judgment on the part of the person performing the process is not patentable. This is not because the process is somehow any less of a process as that term is used in Section 101, but because the disclosure requirement of Section 112 {FN13: 35 U.S.C. §112, ¶1} has not been met. All patent applications must teach how to make and use the claimed invention. If judgments, rather than procedures that can be taught, are necessary to carry out the process, then there hasn’t been the required disclosure and the application is faulty.

III.B.4. Printed Matter

In re Miller {FN14: 418 F.2d 1392, 164 USPQ 46 (CCPA 1969)} and In re Gulack {FN15: 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)} held that printed matter is not patentable because it is not a proper manufacture. The results of this rule are good, since it prevents patents from protecting writings more properly within the scope of copyright.

A better approach is to recognize that something that includes stored information, such as printed matter, is a manufacture, but to consider only the differences of the substrate carrying the printed matter and the prior art substrates when determining whether the invention is novel and nonobvious, unless there is some interplay between the substrate and the printed matter. But as we will later see, this approach is complicated by the requirement of Section 103 that claims be considered “as a whole” when determining whether an invention is obvious.

For example, consider Mark Twain’s “invention” of Tom Sawyer. While the book is a manufacture, that manufacture differs from prior art books only in the writing in the book. The book would be statutory subject matter but would not be novel or nonobvious in light of other books.

III.B.5. Computer Software

There is quite a history regarding the patentability of computer software, discussed in the next chapter. Though a computer program per se is generally not considered patentable, today virtually any technique that can be embodied in a computer program that produces a useful result is patentable if properly described and claimed.

III.B.6. Methods of Doing Business

A number of older cases have held that methods of doing business are not patentable. What constitutes a method of doing business is a fuzzy concept, and most of the cases where it is discussed could have reached the same conclusion on patentability by using clearer concepts such as obviousness in light of the prior art.

Judge Newman, in her dissent in In re Schrader, {FN16: 22 F.3d 290, 30 USPQ2d 1455 (Fed. Cir. 1994)} described a method-of-doing-business exception as “an unwarranted encumbrance to the definition of statutory subject matter” that should be “discarded as error-prone, redundant, and obsolete. It merits retirement from the glossary of Section 101.” {FN17: 22 F.3d at 298, 30 USPQ2d at 1461-1462 (Newman, J., dissenting)} But while Judge Newman’s remarks were in dissent to the opinion of the court, the Federal Circuit’s 1998 decision in State Street Bank {FN18: State Street Bank v. Signature Financial, 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998)} cites her remarks with strong approval:

We take this opportunity to lay this ill-conceived exception to rest. Since its inception, the “business method” exception has merely represented the application of some general, but no longer applicable legal principle, perhaps arising out of the “requirement for invention” – which was eliminated by § 103. Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method. {FN19: 149 F.3d at 1375, 47 USPQ2d at 1602}

Business method patents are generally just a particular type of software patent, since the business method often relies on involved calculations that require the use of a computer in any practical application of the method, or involves doing something that enhances electronic commerce on the Internet.

Next section: Getting A Utility Patent