Is your invention patentable?

One recurring question in the field of patent law is: is my [invention] patentable?  There is, unfortunately, no simple, one-size-fits-all answer to this question, because there are many different angles to examine before one can determine whether an invention is patentable.  The first determination to be made, however, is whether the invention is even eligible for patent protection.

Standards for patent eligible subject matter vary by jurisdiction, and we focus here on two of the main patent jurisdictions, Europe and the United States.

In Europe, Article 52 of the European Patent Convention (EPC) sets forth the requirements for patent eligibility, stating,

European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

Great, it sounds like we can patent just about anything, right?
But hold on one minute, Section (2) of Article 52 goes on to explicitly prohibit patenting of discoveries, scientific theories and mathematical methods;  aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and presentations of information.

Moreover, Article 53 EPC sets forth a number of exceptions to patent eligibility regardless of whether the requirements of Article 52 are met. Those exceptions include inventions the commercial exploitation of which would be contrary to public order or morality; plant or animal varieties or essentially biological processes for the production of plants or animals; and methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

Thus, while initially seeming quite broad, eligibility for patent protection by way of the European Patent Office is narrowed substantially by the prohibitions and exceptions set forth.

Turning to the United States, Section 101 of the US Patent Law[1] sets forth the general principle regarding patent eligible subject matter, stating:

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…

Thus, you understand generally that four categories (i.e., processes, machines, manufactured goods, compositions of matter) and improvements thereof are eligible for patent protection, and that other “creations” (e.g., software code, literary works, etc.) are generally not.  But are there exceptions?  The short answer for the US is yes, the courts in the US have created a number of exceptions to patent eligibility, and those can be briefly summarized as abstract ideas; laws of nature, and natural phenomena.  Once again, while patent eligibility seems broad at first glance, the question is more complicated.

In view of the above you may again ask, can I patent this invention or is it subject to the exceptions?
Indeed, if you have invented a new machine capable of harvesting energy from a previously unharvestable source, or a medication capable of curing a previously incurable disease, the answer may appear to be a straightforward “yes,” while if you have merely coded a new computer based video game, the answer may appear to be a straightforward, “no.”  However, in almost every case, including these cases, the answer is actually more complex and should generally be addressed by a qualified patent attorney.

We would of course, be happy to hear from you.
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[1] It is important to keep in mind that the state of patent eligible subject matter has been in flux in the US for quite some time, and proposed changes to Section 101 were recently introduced as recently as June 2019.  Rest assured that we are actively monitoring the status of these possible changes, and are ready to address them should they be implemented.

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