The scope of eligible subject matter for patent protection has become the subject of increasing debate and confusion in the past few years. According to section 101 of U.S. patent law, the classes of patentable subject matter include “any new and useful process, machine, manufacture, or composition of matter.” This provision contains deliberately broad and extensive language with the goal of encouraging research and development. Yet the flexible scope of the statutory subject matter provision is limited by certain qualifications that are intended to maintain competition and encourage innovation.

The limitations of the statute expressly restrict patent eligibility to something that is a machine, manufacture or composition of a process. Moreover, the subject matter of the patent must be a “new and useful” invention. Any invention or design that does not conform to these categories is barred from patent protection, thereby setting parameters for what the public can use, create or copy in an unrestricted manner.

Certain general categories of subject matter are not entitled to patent protection according to the courts. These include abstract concepts, mathematical formulas, printed matter, business processes and natural occurrences. For example, courts have held that Einstein could not have patented his mathematical law of and that no inventor can patent the power source of electromagnetism or steam. In broader terms, the statute provides where the subject matter is not a concrete application of an idea, a natural phenomenon or a law of nature, then it is not suitable for patent protection.

In the past few decades, delineating the parameters of these provisions has been challenging, particularly in the area of software patents. In Alice Corp. v. CLS Bank International, the court held that the services of the plaintiff, which entailed computer operated escrow services, simply involved using a computer to perform an established practice, and that procedure was an abstract idea. Thus, using a computer for implementation did not render the subject matter patentable. While the case garnered significant attention, it left many unanswered questions about the future of software patents.

Connors & Associates provides expert legal advice in the areas of patent, trademark and copyright law. When you need experienced counsel to help navigate the complex terrain of intellectual property rights, contact John Connors and his team of associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

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