What makes an invention eligible for patent protection?
Not every new thing is patentable. A concept might be unique, and yet ineligible for patent protection. Subject matter eligibility refers to whether an invention is qualified for patent protection. You can think of patenting as satisfying at least two conditions: eligibility and uniqueness. If the subject matter is ineligible, it is disqualified from patent protection regardless of how unique it may seem.
Eligible subject matter does not automatically mean that it’s patentable. An invention must still overcome the hurdle of uniqueness which includes novelty and non-obviousness. The USPTO has attempted to provide guidance on what subject matter would be considered eligible.
What is Section 101?
Subject matter eligibility originates from 35 USC 101 which states:
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.35 USC 101 – Inventions patentable
Accordingly, Section 101 sets forth four categories of inventions that may be eligible for patenting. Software would typically fall under the process category.
What makes software hard to patent?
The laws and regulations surrounding software patents continue to develop. I’ve written about the hurdles that software inventions must overcome in order to be patent eligible. If you are thinking of patenting software, it is critical to have your utility nonprovisional patent application drafted with Section 101 in mind.
By anticipating the potential rejections, more can written in your specification and illustrated in your drawings before you file your software patent application. For example, you want your claims on the software to address the “significantly more than an abstract idea” requirement that the examiner will undoubtedly raise. If the deck is stacked against you, you want to give yourself every advantage before entering the game.
Subject matter eligibility problems: What are examples of inventions ineligible for patent protection?
Besides software patents, ineligible subject matter can also arise in design patent applications. Take a graphical user interface (GUI), for example. Is a GUI a machine, manufacture or composition of matter? Is an icon considered a process? One common solution is to show the GUI on a device which is drawn in broken lines.
Trying to obtain a design patent on a two-dimensional artwork or graphic design without regard to the article can also lead to ineligible problems.
Section 101 rejections arise frequently in business method patent applications. One common rejection you may receive from a patent examiner is that you are trying to patent mental or abstracts steps (e.g., things you would think in your head).
How do you respond to a Section 101 ineligible subject matter Office Action?
There is no template for responding to a Section 101 rejection. A well formulated response would involve a combination of legal arguments citing more recent and relevant caselaw and technical arguments. Since the line between novelty and eligibility has become more fuzzy, it may make sense to argue that the invention is more eligible because it is more unique.
Got subject matter eligibility questions?
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