Patentability: Not All New and Useful Inventions and Discoveries are Patentable

Many people will be surprised, like I was, upon first learning that not all new and useful inventions and discoveries are patentable.

You might be saying at this point, WTF? If an invention is new and useful, it’s still not necessarily patentable? Yup!

Here’s why, according to the patent oracle, MPEP:

Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits patents to be granted only for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

U.S. Patent Law defines what and how patentable subject matter can be claimed. 

35 U.S.C. § 101 guides what can be claimed whereas 35 U.S.C. § 112 provides guidelines on claim formation and required claim relation(s) to the specification disclosure.

According to Patent Prosecution training for new lawyers:

Laws of nature, natural phenomena, and abstract ideas are not per se patentable subject matter (Bilski v. Kappos, 561 U.S. ___ (2010)); however, application of these to a new and useful product or process has been found to be patentable subject matter.  (Diamond v. Diehr, 450 U.S. 175 (1981)).  For example, the law of gravity, naturally occurring elements or life forms, and mathematical algorithms are not patentable subject matter.  However, purified or isolated vitamins, hormones, and DNA sequences, as well as methods utilizing algorithms for practical uses, are patentable subject matter.

The basic tools of scientific and technological work cannot be patented:

As a trilogy of Supreme Court decisions on patent-eligibility from approximately three decades ago had taught, “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”

A claim to a “principle” cannot be patented.

Patentable Subject Matter:

Congress has defined patentable subject matter in consistent terms for over 210 years. The first United States Patent Act in 1790 required that the applicant “have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein.” Act of April 10, 1790, ch. 7, § 1, 1 Stat. 109. The language was amended three years later to require that the applicant “have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement [thereof].” Act of February 21, 1793, ch. 11, § 1, 1 Stat. 318. The order and form of the words “invent” and “discover” changed several times over subsequent acts, but the statutory classes remained unchanged until the Patent Act of 1952 changed “art” to “process” and defined “process” as “process, art or method.” See 1 Patents § 1.01. A “process” had long been considered to be a “useful art.” See Corning v. Burden, 56 U.S. 252, 267 (1854) (“A process, eo nomine, is not made the subject of a patent in our act of Congress. It is included under the general term ‘useful art.’”).

The document goes on to expand upon the requirements of Patentable subject matter:

“[N]o patent is available for a discovery, however useful, novel, and nonobvious, unless it falls within one of the express categories of patentable subject matter of 35 U.S.C. § 101.” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483, 181 USPQ 673, 679 (1974). The statutory categories of § 101 define eligible (patentable or statutory) subject matter, i.e., subject matter that can be patented. The last phrase, “subject to the conditions and requirements of this title,” makes it clear that § 101 is limited to the subject matter that can be patented. See S. Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952), reprinted in 1952 U.S. Code Cong. & Admin. News 2394, 2399 (“A person may have ‘invented’ a machine or manufacture, which may include anything under the sun made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.”). The terms “new and useful” refer to conditions for patentability of subject matter that is eligible to be patented. “It may be useful to think of eligibility as a precondition for patentability, and of utility as one of the three fundamental conditions for patentability, together with novelty … and nonobviousness ….” Robert L. Harmon, Patents and the Federal Circuit 40 (4th ed. Bureau of National Affairs, Inc. 1998). Thus, as a matter of terminology, subject matter that does not fall within one of the statutory classes is said to be “nonstatutory” or “unpatentable” subject matter, with utility being a separate requirement for patentability.

Also see:

• Diamond vs. Chakrabarty, 447 U.S. 303 (1980) [Supreme Court case dealing with whether genetically modified organisms can be patented]. Ananda Mohan Chakrabarty had developed a bacterium capable of breaking down crude oil, which Chakrabarty proposed to use in treating oil spills. The examiner turned his claims down stating that living things were not patentable.
• Manufacture