Innovators frequently ask, “What is a patentable invention?” This crucial question arises because patents confer legal rights that enable the patent owner to prevent others from making, using, selling, and offering for sale patented inventions. Patents can effectively block competitors from copying a new or improved product or process. Here, we at Aumirah, a company specializing in intellectual property rights, provide a comprehensive guide to understanding patent eligibility.
Historical Context and Patentable Subject Matter
The concept of patentable subject matter has evolved over centuries. The first U.S. patent law, enacted in 1793 and authored by Thomas Jefferson, described patentable subject matter as “any new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement thereof.” This broad language remains embedded in the law today, although in 1952, Congress replaced “art” with “process” but otherwise left Jefferson’s language unchanged.
Criteria for Patent Eligibility
Novelty
This means that your invention must not have been made public – not even by yourself – before the date of the application.
Inventive Step
This means that your product or process must be an inventive solution. It cannot be a solution that would be obvious to a manufacturer. Take the example of a different attachment method. Instead of welding the tubes of a swing together, they might be screwed together. This may well be a new method of making swings. But for someone involved in making them, it is too obvious a solution to be called an inventive step.
Industrial Applicability
This criterion implies that it must be possible to actually manufacture the new invention. In other words, you can apply for a patent on a new kind of playing card that is easier to hold than existing cards. But you can’t obtain a patent for an idea for a new card game.
These rules are laid down in the Patents Act 1995.
Unpatentable Discoveries
Despite this broad interpretation, the courts have identified three categories of discoveries that are inherently unpatentable:
- Abstract ideas,
- Laws of nature,
- Natural phenomena.
These categories represent fundamental principles that are free for all to use. However, practical applications or uses of an idea, law of nature, or natural phenomenon are generally patentable. These practical applications are typically embodied in the categories of machines, manufactures, and compositions of matter.
Special Consideration for Process Claims
Process claims warrant careful consideration for patent eligibility. A notable Supreme Court decision has brought another category of discoveries under scrutiny—diagnostic methods. This decision highlights the challenges associated with patenting processes that involve natural principles.
In the case of Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Court reviewed the eligibility of patent claims related to processes using thiopurine drugs to treat autoimmune diseases. These drugs, when ingested, produce metabolites in the bloodstream. Because patients metabolize drugs differently, doctors faced challenges in determining the appropriate dosage. Researchers discovered that specific dosing regimens could be correlated with the concentration of certain drug metabolites. The USPTO granted claims to this discovery in U.S. Patent No. 6,355,623, which covered processes for “optimizing therapeutic efficacy” and “reducing toxicity associated with treatment” by administering a drug and determining the level of the drug or metabolite in a patient.
Despite the practical utility of these processes, the Supreme Court unanimously found the claims ineligible for patent protection. The Court ruled that the steps recited in the claimed processes involved “well understood, routine, conventional activity” by scientists and doctors, effectively claiming the underlying laws of nature themselves. This decision underscores the necessity of ensuring that process claims cover something significantly more than the natural principle itself.
Implications for Innovators
In light of the Supreme Court’s decision, it is crucial for innovators to recognize that patent claims directed to processes may not be eligible for patent protection if they broadly cover a law of nature, natural phenomenon, or naturally occurring relation or correlation. To be eligible, the claim must encompass something significantly more than the mere application of a natural principle.
Conclusion
Innovators can patent a wide variety of inventions that fit within the broad categories of machines, manufactures, or compositions of matter. However, careful consideration must be given to claims involving processes to ensure they do not merely cover abstract ideas, natural laws, or natural phenomena. At Aumirah, we are dedicated to helping innovators navigate the complexities of intellectual property rights, ensuring that their inventions meet all criteria for patent eligibility.
How Aumirah Can Help
At Aumirah, we provide comprehensive support throughout the patenting process. Our expert team assists in identifying patentable inventions, conducting thorough prior art searches, and drafting robust patent applications. We ensure your claims are strategically crafted to maximize protection and avoid pitfalls related to abstract ideas, natural laws, and natural phenomena. Additionally, we offer guidance on navigating USPTO procedures and defending your patents against challenges. Trust Aumirah to safeguard your innovations and secure the legal protections necessary to maintain a competitive edge in the market. Contact us today to begin protecting your intellectual property.
