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8142 / What types of inventions can qualify for a patent?
Assuming that the invention is “nonobvious” over such previously known technology, there are still limitations to the types of subject matters that can qualify for patenting under 35 U.S.C. Section 101. Patents can be obtained for virtually any improvement in the industrial arts including computer software which has some practical application, including a method of doing business (meaning that the improvement is more than a pure abstract idea)1 and including a business method using the Internet, an article, a product, a method of making something, a method of using something, and a composition of matter. Patents are also obtainable for asexually reproduced plants and the new, original, and ornamental design for an article of manufacture.
On the other hand, the patent laws prohibit obtaining a patent for improvements in certain patent-ineligible categories, including purely printed matter or laws of nature, natural phenomena, or abstract ideas.2
Two important “expansions” of patentable subject matter, or patent-eligible subject matter, in the 1980s included its expansion to man-made microorganisms and computer programs. Basically, the Supreme Court decisions that provided these breakthroughs took a position that these subject matters were not encompassed within the above noted patent-ineligible areas. Specifically, the 1980 Supreme Court case of Diamond v. Chakrabarty3 held that man-made microorganisms were not excluded as being “laws of nature” and therefore constituted patentable subject matter.
The breakthrough computer case, the 1981 Supreme Court case of Diamond v. Diehr,4 concluded that computer programs were neither laws of nature nor methods of doing business and therefore, within rather strict limitations, constituted patentable subject matter. The extent of patentability of computer software was significantly enhanced by subsequent decisions of the Court of Appeals for the Federal Circuit, which caused the U.S. Patent and Trademark Office (USPTO) to issue more liberal guidelines for determining whether computer software inventions are entitled to a patent. In In re Alappat,5 the Court of Appeals for the Federal Circuit held that certain patent claim language (a so-called “means-plus-function clause”), which claims the use of a mathematical calculation, is patentable subject matter.
In 1998, in State Street Bank and Trust Company v. Signature Financial Group, Inc.,6 the Court of Appeals for the Federal Circuit expanded and clarified that computer software covering a method of doing business (instead of accomplishing a purely physical phenomena) was patent-eligible. AT&T Corporation v. Excel Communications, Inc.7 extended the breadth of patent-eligible subject matter to any computer software method that achieved a useful result, even in the absence of a physical transformation. A major beneficiary of this expansion has been the Internet. As examples, patents have been issued to Amazon.com for its method of placing an order and Priceline.com for its method of ordering airline-specified flight tickets.8
The evolution sparked by the State Street case received an impetus from the USPTO. In October 2005, the Board of Patent Appeals and Interferences of the USPTO issued a decision, Ex Parte Lundgren,9 which expanded the reach of patentable subject matter in the area of business methods beyond and outside of the realm of computer related inventions. Shortly thereafter, the USPTO issued Interim Examination Guidelines10 accepting the position of Lundgren. Lundgren removes the requirement that patentable subject matter must be within the “technical arts.”
The Lundgren application claimed a method for compensating managers that reduced incentives for collusion in an oligopolistic industry. His “invention” claimed a method for choosing an absolute performance standard, measuring the relative performance of each firm against its competitors on that standard, and using that calculation to determine compensation. Unlike prior business method patents, the claims of this application do not require the use of a computer or other machine.
Under USPTO guidelines, the examiner must first determine whether the claimed invention falls within one of the enumerated categories of patentable subject matter, i.e., machine, process, manufacture, or composition of matter. Next, the examiner should determine whether the invention falls within one of the judicial exceptions to patentable subject matter, i.e., laws of nature, natural phenomena, or abstract ideas. If the invention is within such an exception to patentable subject matter, the examiner should then determine whether it is nonetheless patentable subject matter because it is a “practical application” of such an abstract idea, law of nature, or natural phenomena.
With respect to patents with claims directed to abstract ideas, the U.S. Court of Appeals for
the Federal Circuit may have limited the viability of these claims as patentable subject matter in In re Comiskey (rejecting a method for mandatory arbitration resolution as unacceptably abstract).11
See Q 8143 for a discussion of the recent issues impacting computer software patents specifically. See Q 8144 for a discussion of design patents.
1. State Street Bank and Trust Co v. Signature Financial Group, 149 F.3d 1368 (Fed Cir 1998).
2. 35 USC § 101.
3. 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144 (1980).
4. 450 U.S. 175, 101 S. Ct. 1048, 67 L. Ed. 2d 155 (1981).
5. 33 F.3d 1526, 31 U.S.P.Q.2d 1545 (Fed. Cir. 1994).
6. 149 F.3d 1368, 47 U.S.P.Q.2d 1596 (Fed. Cir. 1998).
7. 172 F.3d 1352, 50 U.S.P.Q.2d 1447 (Fed. Cir. 1999).
8. US Patent Nos. 5,960,411 and 5,897,620, respectively.
9. PTO Bd. Pat. and Int. Appeal No. 2003-2088 (Oct. 2005).
10. Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off Gaz Pat Office 142 (Nov. 22, 2005); see also requests for comments, 70 Fed. Reg. 75451.
11. 499 F.3d 1365 (Fed. Cir. 2007).
On the other hand, the patent laws prohibit obtaining a patent for improvements in certain patent-ineligible categories, including purely printed matter or laws of nature, natural phenomena, or abstract ideas.2
Two important “expansions” of patentable subject matter, or patent-eligible subject matter, in the 1980s included its expansion to man-made microorganisms and computer programs. Basically, the Supreme Court decisions that provided these breakthroughs took a position that these subject matters were not encompassed within the above noted patent-ineligible areas. Specifically, the 1980 Supreme Court case of Diamond v. Chakrabarty3 held that man-made microorganisms were not excluded as being “laws of nature” and therefore constituted patentable subject matter.
The breakthrough computer case, the 1981 Supreme Court case of Diamond v. Diehr,4 concluded that computer programs were neither laws of nature nor methods of doing business and therefore, within rather strict limitations, constituted patentable subject matter. The extent of patentability of computer software was significantly enhanced by subsequent decisions of the Court of Appeals for the Federal Circuit, which caused the U.S. Patent and Trademark Office (USPTO) to issue more liberal guidelines for determining whether computer software inventions are entitled to a patent. In In re Alappat,5 the Court of Appeals for the Federal Circuit held that certain patent claim language (a so-called “means-plus-function clause”), which claims the use of a mathematical calculation, is patentable subject matter.
In 1998, in State Street Bank and Trust Company v. Signature Financial Group, Inc.,6 the Court of Appeals for the Federal Circuit expanded and clarified that computer software covering a method of doing business (instead of accomplishing a purely physical phenomena) was patent-eligible. AT&T Corporation v. Excel Communications, Inc.7 extended the breadth of patent-eligible subject matter to any computer software method that achieved a useful result, even in the absence of a physical transformation. A major beneficiary of this expansion has been the Internet. As examples, patents have been issued to Amazon.com for its method of placing an order and Priceline.com for its method of ordering airline-specified flight tickets.8
The evolution sparked by the State Street case received an impetus from the USPTO. In October 2005, the Board of Patent Appeals and Interferences of the USPTO issued a decision, Ex Parte Lundgren,9 which expanded the reach of patentable subject matter in the area of business methods beyond and outside of the realm of computer related inventions. Shortly thereafter, the USPTO issued Interim Examination Guidelines10 accepting the position of Lundgren. Lundgren removes the requirement that patentable subject matter must be within the “technical arts.”
The Lundgren application claimed a method for compensating managers that reduced incentives for collusion in an oligopolistic industry. His “invention” claimed a method for choosing an absolute performance standard, measuring the relative performance of each firm against its competitors on that standard, and using that calculation to determine compensation. Unlike prior business method patents, the claims of this application do not require the use of a computer or other machine.
Under USPTO guidelines, the examiner must first determine whether the claimed invention falls within one of the enumerated categories of patentable subject matter, i.e., machine, process, manufacture, or composition of matter. Next, the examiner should determine whether the invention falls within one of the judicial exceptions to patentable subject matter, i.e., laws of nature, natural phenomena, or abstract ideas. If the invention is within such an exception to patentable subject matter, the examiner should then determine whether it is nonetheless patentable subject matter because it is a “practical application” of such an abstract idea, law of nature, or natural phenomena.
With respect to patents with claims directed to abstract ideas, the U.S. Court of Appeals for
the Federal Circuit may have limited the viability of these claims as patentable subject matter in In re Comiskey (rejecting a method for mandatory arbitration resolution as unacceptably abstract).11
See Q 8143 for a discussion of the recent issues impacting computer software patents specifically. See Q 8144 for a discussion of design patents.
1. State Street Bank and Trust Co v. Signature Financial Group, 149 F.3d 1368 (Fed Cir 1998).
2. 35 USC § 101.
3. 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144 (1980).
4. 450 U.S. 175, 101 S. Ct. 1048, 67 L. Ed. 2d 155 (1981).
5. 33 F.3d 1526, 31 U.S.P.Q.2d 1545 (Fed. Cir. 1994).
6. 149 F.3d 1368, 47 U.S.P.Q.2d 1596 (Fed. Cir. 1998).
7. 172 F.3d 1352, 50 U.S.P.Q.2d 1447 (Fed. Cir. 1999).
8. US Patent Nos. 5,960,411 and 5,897,620, respectively.
9. PTO Bd. Pat. and Int. Appeal No. 2003-2088 (Oct. 2005).
10. Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off Gaz Pat Office 142 (Nov. 22, 2005); see also requests for comments, 70 Fed. Reg. 75451.
11. 499 F.3d 1365 (Fed. Cir. 2007).
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