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In most Patent Law s, patentable subject matter (or '''statutory subject matter''') is the requirement that an Invention , for which Patent protection is sought, is of a kind of subject matter that is, by law, ''allowed'' patent protection. This test is one of the fundamental requirements for Patentability , along with Novelty , Inventive Step Or Nonobviousness , and Utility or Industrial Applicability . UNITED STATES PATENT LAW Section 101 of Title 35 U.S.C. sets out the subject matter that can be patented: 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, subject to the conditions and requirements of this title. As of s to determine if a given Claim ed invention meets the statutory requirements of being a useful process, manufacture, composition of matter or machine (35 USC 101). These guidelines assert that a process, including a process for doing business, must produce a concrete, useful and tangible result in order to be patentable. It does not matter whether the process is within the traditional technological arts or not. A price for a financial product, for example, is considered to be a concrete useful and tangible result (see State Street Decision ). The USPTO has reasserted its position that literary works, compositions of music, compilations of data, legal documents (such as insurance policies), and forms of energy (such as data packets trasmitted over the Internet), are not considered "manufactures" and hence, by themselves, are not patentable. Nonetheless, the USPTO has requested comments from the public on this position. The USPTO was prompted to issue the guidelines by a recent decision by their board of appeals, Ex Parte Lundgren {Link without Title} . This decision asserted that according to US judicial opinions, inventions do not have to be in the "technological arts" in order to satisfy the requirements of 35 USC 101. They must, however, produce a concrete, useful and tangible result. Computer Software as Patentable Subject Matter The mathematical algorithm exception arose out of three Supreme Court cases commonly referred to as the “Supreme Court Trilogy.” These cases, Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr, represent the only Supreme Court opinions on the patentability of computer software. The first decision in the trilogy was the 1972 decision of Gottschalk v. Benson. The invention in this case was a method of programming a general-purpose digital computer using a mathematical algorithm to convert binary-coded decimal numbers into pure binary numbers. The Court noted that phenomena of nature mental processes, and abstract intellectual concepts were not patentable, since they were the basic tools of scientific and technological work. However, new and useful inventions, which derived from such discoveries, were patentable. The Court found that the discovery in Benson was unpatentable since the invention was no more than a mathematical algorithm. Despite this holding, the Court emphasized that its decision did not preclude computer software from being patented, but rather precluded the patentability of software where the only useful characteristic was an algorithm or sequence of algorithms. The Court further noted that validating this type of patent would foreclose all future use of the mathematical algorithm. Therefore, like the traditional exceptions to patentable subject matter, the purpose of the mathematical algorithm exception was to encourage development of new technologies by not granting patents that would preclude others from using abstract mathematical principles. This early decision appeared to preclude patents for software since all software is composed of algorithms. EUROPEAN PATENT CONVENTION The European Patent Convention does not provide any positive guidance on what ''should'' be considered an invention for the purposes of patent law. However, it provides in Article 52(2) a nonexhaustive list of what are not to be regarded as inventions, and therefore ''not'' patentable subject matter: The following in particular shall not be regarded as inventions within the meaning of paragraph 1: :::''(a) discoveries, scientific theories and mathematical methods;'' :::''(b) aesthetic creations;'' :::''(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;'' :::''(d) presentations of information.'' Art. 52(3) then states that Art. 52(2) EPC must be construed quite narrowly: The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. (Some further items are excluded under Art. 52(4), as formally being not industrially applicable). Practice at the European Patent Office Under Article 52(1) of the European Patent Convention (EPC) "''European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.''" So, four questions need to be assessed: #Is there an invention? #Is the invention susceptible of industrial application? #Is the invention novel? #Does the invention involve an inventive step? The first question "Is there an invention?" is equivalent to: "Is the claimed subject-matter as a whole excluded from the realm of patentable subject-matter?" The invention question or patentable subject-matter question necessarily precedes the three further questions, which cannot be assessed when there is no invention (see Art. 57 "''An invention shall be considered as susceptible of industrial application if (...)''", Art. 54(1): "''An invention shall be considered to be new if (...)''", and Art. 56(1): "''An invention shall be considered as involving an inventive step (...)''"). According to the , T 931/95 {Link without Title} ). Patentable subject-matter considerations also intervene again at a secondary level, during the Inventive Step examination. T 641/00 (OJ EPO 2003,352; cf headnote I) that, "''An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.''" {Link without Title} . The non-technical features are the ones that are excluded from the realm of patentable subject-matter as a matter of policy. An unfortunate application or patent for which "what is new and inventive is not patentable; and what is patentable is neither new nor inventive" would therefore be refused (Art. 97(1) EPC) or revoked (Art. 102(1) EPC) as lacking novelty and/or inventive step. Practice in the United Kingdom Following the decision in the case ''CPFH's Application'' (2005), which contains a lengthy discussion of Article 52 and its application, the UKPO has adopted [http://www.patent.gov.uk/patent/notices/practice/examforpat.htm] the following test: All the requirements for patentability set out in section 1(1) have to be looked at together. This, the judgment says (paragraph 95), suggests a two step approach which can be summarised as follows: ::#''Identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application).'' ::#''Determine whether it is both new and not obvious (and susceptible of industrial application) under the description of an "invention" in the sense of Article 52 of the European Patent Convention - which section 1(2) of the Act reflects.'' This may result in slightly different wording of rejections to that used by the EPO, but the procedure is essentially the same. CONTROVERSIES The question of what should and should not be patentable subject matter has spawned a number of battlegrounds in recent years, setting against each other those in each area supporting patentability, claiming that patents would cause increased innovation and public good, against opponents with views that patentability was being sought only for private good but would do public harm. Flashpoints have included the patenting of naturally occurring biological material; genetic sequences; "traditional knowledge"; programs for computers; Business Method s; etc... In the process, different jurisdictions have come to different views as to what should be allowed and what should not. "Business methods" have proven to be a particularly controversial type of statutory subject matter. They have been criticized both because they grant patent rights that are too broad, and also because they burden the USPTO. SEE ALSO
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