Requirements Of Patentability

• Author: Joseph P. Kennedy/Wayne H. Watkins/Elyse N. Ball (With)
• Profession: Distinguished Professor of Polymer Science and Chemistry at The University of Akron/Associate Vice President for Research at The University of Akron/Project Manager for the University of Akron Research Foundation
• Pages: 26-54

CHAPTER 5

REQUIREMENTS OF PATENTABILITY

5.1. WHAT IS PATENTABLE?

The Patent Law or Patent Statute is Title 35 of the United States Code (U.S.C.

35), and it governs all patent cases coming to the U.S. Patent and Trademark

Office (PTO) and the court system. The roots of this patent law are found in

the U.S. Constitution (see Section 2.2). One of the first paragraphs, Section

101 of the law, sets the stage by defining what is patentable:

Whoever invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and useful improve-

ment thereof, may obtain a patent therefor, subject to the conditions and

requirements of this title.

One of our objectives is to encourage you, the young technical professional,

to invent. Understanding the following basic concepts will help you become

an inventor:

1. What can and cannot be patented as an invention (statutory classes)

2. What are the basic requirements of an invention (the first law of

inventing)

3. What two steps make an invention (the second law of inventing)

How to Invent and Protect Your Invention: AGuide to Patents for Scientists and Engineers,

First Edition. Joseph P. Kennedy and Wayne H. Watkins with Elyse N. Ball.

© 2012 John Wiley & Sons, Inc. Published 2012 by John Wiley & Sons, Inc.

26

PATENTABLE AND NONPATENTABLE SUBJECT MATTER 27

A word of caution on the language of Section 101 of the statute: “Discovers”

means something more specific under the Patent Law than it does in common

usage. Someone can discover a new planet, a new species of animal, or the

way certain molecules behave in solution. However, these “discoveries” are

not patentable under U.S. Patent Law, as will be discussed below.

Let us addresses these concepts.

5.2. PATENTABLE AND NONPATENTABLE SUBJECT MATTER

The Patent Law clearly defines what can and cannot be protected by patent in

the United States (see the quote above). Thus, the following are patentable:

rProcesses or methods (these terms are synonymous), that is, making

something in one or several steps—for example, chemical reactions,

software and business methods.

rMachines, that is, engines, devices, or mechanical contraptions that are

capable of performing a useful function by the interaction of parts.

rManufactures, that is, manufactured products and articles without

movable parts made by hand or machine, such as a safety pin or paper

clip.

rCompositions of matter, that is, chemical compounds, polymers, drugs,

and manmade microorganisms or animals.

rImprovements of the above, that is, a new use for something old.

Inventions must fall within at least one of these categories. The invention

may be properly classified in more than one category. When the inventor

applies for a patent, the Patent Office does not require her to specify the

category.

In contrast, the following cannot be patented:

rLaws of nature—for example, the law of gravity or electricity. While a

law of nature is not patentable, the use of such a law to accomplish a

purpose is. And it is not necessary for the inventor to understand the law,

just to use it. Invention is not about intellectual discovery of laws but

applying them to useful ends.

rProducts of nature—for example, a natural element, a rock, a plant, or

an animal, even if the applicant discovered a new species.

rScientific principles or theories—for example, the survival of the fittest.

rAbstract ideas—for example, religious or philosophical ideas.