Chapter §3.01 Introduction

• Jurisdiction: United States

§3.01 Introduction

[A] 35 U.S.C. §101: The First Door to Patentability

This treatise chapter considers the types or categories of inventions for which utility patents¹ are potentially available under U.S. law. Practitioners typically refer to these patent-eligible types of inventions as comprising "statutory subject matter," referring to the categories of subject matter recited in 35 U.S.C. §101. The statue broadly provides:

§101. Inventions patentable

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. ²

Although the current Supreme Court terminology is "patent-eligible,"³ this treatise will sometimes interchangeably use the phrase "potentially patentable subject matter" to emphasize that even if an invention is of the proper type or category, it is only potentially patentable.⁴ The invention must still satisfy the remaining statutory criteria of utility,⁵ novelty,⁶ and nonobviousness⁷ before a patent will be granted. As Judge Giles Rich explained in In re Bergy,⁸ "[a] person may have 'invented' a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title [35 U.S.C.] are fulfilled."⁹

Satisfying the potentially patentable subject matter threshold of 35 U.S.C. §101 means that an invention has passed through the first of the three doors in Judge Rich's classic "three doors to patentability" metaphor of Bergy:

The first door which must be opened on the difficult path to patentability is §101 (augmented by the §100 definitions), . . . . The person approaching that door is an inventor, whether his invention is patentable or not. There is always an inventor; being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door. Thus, section 101 begins with the words "Whoever invents or discovers," and since 1790 the patent statutes have always said substantially that. Being an inventor or having an invention, however, is no guarantee of opening even the first door. What kind of an invention or discovery is it? In dealing with the question of kind, as distinguished from the qualitative conditions which make the invention patentable, §101 is broad and general; its language is: "any * * * process, machine, manufacture, or composition of matter, or any * * * improvement thereof." Section 100(b) further expands "process" to include "art or method, and * * * a new use of a known process, machine, manufacture, composition of matter, or material." If the invention, as the inventor defines it in his claims (pursuant to §112, second paragraph), falls into any one of the named categories, he is allowed to pass through to the second door, which is §102; "novelty and loss of right to patent" is the sign on it. Notwithstanding the words "new and useful" in §101, the invention is not examined under that statute for novelty because that is not the statutory scheme of things or the long-established administrative practice. ¹⁰

Thus, 35 U.S.C. §101 enumerates the types of inventions that can be patented in the United States, in contrast with §102 and §103, which establish qualitative conditions for patentability.

The legislative history of the 1952 Patent Act states expansively that U.S. patents are available for "anything under the sun that is made by man."¹¹ Although the courts traditionally construed patent-eligible subject matter quite broadly in accordance with this legislative direction, the case law interpreting 35 U.S.C. §101 also provides important limits on what can be patented. A number of notable judicial decisions have refined these limits, as detailed below.

[B] The Statutory Categories Within §101

Each of the four statutory categories of 35 U.S.C. §101—process, machine, manufacture, and composition of matter—is separately discussed below. First, a few working definitions and examples are warranted:

• A "process," in patent parlance, is synonymous with a method, ¹² and is merely a series of steps for carrying out a given task. ¹³ Process patents have been granted for a method of making a "stuffed-crust" pizza, ¹⁴ and to the Internet bookseller Amazon.com for its method of "One-Click" online ordering of merchandise. ¹⁵

• A "machine" is synonymous with an apparatus, and generally has moving parts, such as an internal combustion engine. ¹⁶

• A "composition of matter" includes chemical compositions and mixtures of substances such as metallic alloys. ¹⁷

• Lastly, a "manufacture" is the default category for human-made subject matter without moving parts, ¹⁸ such as a helically grooved foam football ¹⁹ or the Java Jacket® insulating sleeve for hot drink cups. ²⁰

Each of these categories of potentially patentable subject matter is examined separately below.

[C] Claiming the Inventive Concept Within the Statutory Categories

The claims of a patent need not explicitly recite the category of potentially patentable subject matter to which the invention belongs, although some patent claims do. The proper categorization is usually clear from the face of the claim. For example, a claim that recites "a programmed computer" is understood as directed to the machine category of §101.²¹ So long as the claim is sufficiently definite under 35 U.S.C. §112, ¶2,²² such that a U.S. Patent and Trade Office (USPTO) examiner can determine whether the recited subject matter falls within one or more categories of §101, nothing further is required.

The inventive concept to which a particular patent is directed may encompass a number of different manifestations. In other words, the "invention" may be claimed in many different ways, even within a single patent application, and the claims of that application may be drawn to more than one statutory subject matter category under 35 U.S.C. §101.

For example, the inventor of a novel and nonobvious drug may file a patent application claiming the chemical structure of the drug itself as a composition of matter, as well as a method of synthesizing the drug. The same application might also claim a method of treating patients with a certain disease, which comprises administering an effective amount of the drug. All of these claims would be drawn to various aspects of the same "invention" or "inventive concept," broadly understood.

Claims that recite subject matter falling within different statutory categories, as in the preceding new drug example, are often filed in a single patent application because they all stem from the same inventive contribution. In some instances, however, the USPTO will require "restriction" of certain groups of claims into separate patent applications, primarily for the administrative convenience of the agency during the examination process.²³ Restriction is appropriate if the claims are directed to "independent and distinct" inventions.²⁴ For example, the new drug inventor in the above example might be required to restrict her original (parent) application to only those claims directed to the composition of matter, and to file one or more additional (divisional) applications directed to the remaining...