Chapter 37 - § 37.3 • PATENTABLE SUBJECT MATTER

• Jurisdiction: Colorado

§ 37.3 • PATENTABLE SUBJECT MATTER

An initial question that confronts many inventors — and therefore a question that will be posed to those inventors' business attorneys — is whether a particular idea embodies the type of subject matter that can be protected by a patent. This difficult issue is the subject of many volumes of patent law treatises. However, as a starting point, the U.S. Supreme Court stated in a very famous case, Diamond v. Chakrabarty,¹⁸ that "anything under the sun made by man" is subject to patent protection.¹⁹ In some subject areas, however, the USPTO has adopted a more narrow approach.

For example, many inventors are uncertain whether software-related inventions are protectable under U.S. patent law. Software-related inventions are most definitely protectable and are an area in which U.S. patents are now routinely allowed. This is a change from earlier years, when it was difficult to get patents allowed for software by the USPTO. Software-related inventions are still not patentable in many foreign countries, however.

In 2014, the U.S. Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). The invention at issue in that case dealt with a computer-implemented scheme for mitigating "settlement risk." The Court held that a scheme for mitigating settlement risk was merely an abstract idea and that simply requiring generic computer implementation of the scheme did not transform the abstract idea into a patent-eligible invention. Therefore, it behooves inventors in the wake of the Alice decision to couch their software-related inventions as doing more than merely implementing a known economic practice via a general purpose computer.

Another question that frequently arises is whether living matter is patentable. The Chakrabarty case dealt with this issue in determining whether a genetically engineered bacterium that was useful in cleaning up oil spills was entitled to be patented. In Chakrabarty, the U.S. Supreme Court held that living matter is indeed patentable.²⁰

A more topical question is whether business methods are patentable. The long-held belief among the patent bar was that business methods were not patentable. This began to change in 1982 with the grant of a patent to Merrill Lynch for a cash management account system.²¹ Then, in 1998, the U.S. Court of Appeals for the Federal Circuit stated that business methods were indeed patentable.²²

In 2010, the issue of whether business methods constituted patentable subject matter was addressed by the U.S. Supreme Court in Bilski v. Kappos.²³ The Court noted that

Section 101 similarly precludes the broad contention that the term "process" categorically excludes business methods. The term "method," which is within § 100(b)'s definition of "process," at least as a textual matter and before consulting other limitations in the Patent Act and this Court's precedents, may include at least some methods of doing business.²⁴

The Court ruled that the Bilski patent itself was invalid not because it constituted a business method, but that due to the way it was claimed it embodied an abstract idea. Abstract ideas are an exception to patentable subject matter.

Most recently, the Supreme Court in Mayo Collaborative Services v. Prometheus Labs, Inc.²⁵ 132 S. Ct. 1289 (2012), addressed whether a personalized medicine-dosing process was patent eligible. The Court held that the particular claim in dispute embodied a law of nature (e.g., relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a drug will prove ineffective or cause harm). The Court ruled that the claimed application of the law of nature was so broad that it monopolized the law of nature itself.²⁶ As a result, the claim was held to be patent ineligible. The decision could have significant impact on the ability to patent personalized medicine and gene testing, as well as the validity of any existing patents on such subject matter.

While utility patents require a usefulness element,²⁷ design patents require an ornamental design element,²⁸ and plant patents require a new variety of plant element,²⁹ all three types of patents require that an invention meet two important provisions of the patent law before a patent will be granted: (1) the invention must be novel, and (2) the invention must be non-obvious.

§ 37.3.1—Novelty

An invention must be "new" to satisfy the novelty provisions of United States patent law. For example, the invention must not have been known or used by others in the United States, or patented or described in a printed publication in the United States or a foreign country, before the patent applicant invented the same subject matter.³⁰ Furthermore, the invention must not have been patented or described in a printed publication in the United States or a foreign country or in public use or on sale in the United States more than one year prior to the applicant's date of application for a patent in the United States.³¹ In addition, the person filing the patent application must have actually discovered the invention himself or herself.³²

Practice Pointer
In the initial conversation with a client who inquires about pursuing patent protection in the United States, a practitioner should investigate when the client made any public disclosure of the invention or offer for sale. In the United States, a one-year time bar will require that the inventor have his or her

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