Patentable subject matter
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Added a section covering the basics of Canadian patentable material.
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{{Patentability}}
In most patent laws, '''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 (patent)|novelty]], [[inventive step and non-obviousness|inventive step or nonobviousness]], and [[utility (patent)|utility]], [[industrial applicability]] or Manner of Manufacture as defined by the [[Statute of Monopolies]].
== Legislations ==
{{Patent law}}
The subject-matter which is regarded as being patentable as a matter of policy, and correspondingly the subject-matter which is excluded from patentability as a matter of policy, depends on the national legislation or international treaty.
=== 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 {{EPC 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.''
{{EPC Article|52|3}} then qualifies Art. 52(2) EPC by stating:
:''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 {{EPC Article|52|4}}, as formally being not industrially applicable).
==== Practice at the European Patent Office ====
Under {{EPC Article|52|1}}, "''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. <ref> See {{EPC Article|57}}: "''An invention shall be considered as susceptible of industrial application if (...)''", {{EPC Article|54|1}}: "''An invention shall be considered to be new if (...)''", and {{EPC Article|56|1}}: "''An invention shall be considered as involving an inventive step (...)''") </ref>
According to the [[case law]] of the [[Appeal procedure before the European Patent Office|Boards of Appeal of the EPO]], the question "Is there an invention?" also implicitly implies the further question: "Does the claimed subject-matter have a technical character?" "''Having technical character is an implicit requirement of the EPC to be met by an invention in order to be an invention within the meaning of {{EPC Article|52|1}}''". <ref> [[T 931/95]] (''Pension Benefit Systems Partnership'') </ref>
Patentable subject-matter considerations also intervene again at a secondary level, during the [[Inventive step and non-obviousness|inventive step]] examination. [[T 641/00]] (Comvik/Two Identities) states 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.''" <ref> [http://legal.european-patent-office.org/dg3/biblio/t000641ex1.htm T 641/00 (OJ EPO 2003,352; cf headnote I)] </ref> The non-technical features are the ones that are excluded from the realm of patentable subject-matter as a matter of policy. [[T 258/03]] (Hitachi/Auction Method) further developed this test for patentable subject-matter.
Under this test, a patent application or patent which does not provide a technical solution to a technical problem would be refused <ref> {{EPC Article|97|1}} </ref> or revoked <ref> {{EPC Article|102|1}} </ref> as lacking inventive step.
====Practice in the United Kingdom====
Following the 2006 [[Court of Appeal of England and Wales|Court of Appeal]] judgment in [[Software patents under United Kingdom patent law#Aerotel_v_Telco_and_Macrossan.27s_application|Aerotel v Telco and Macrossan's application]], which contains a lengthy discussion of case law in the area, the UKPO has adopted the following test:<ref name="UKPO practice">[http://www.patent.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm Patents Act 1977: Patentable subject matter<!-- Bot generated title -->]</ref>
: (1) properly construe the claim
: (2) identify the actual contribution
: (3) ask whether it falls solely within the excluded subject matter
: (4) check whether the actual or alleged contribution is actually technical in nature.
The Court decided that the new approach provided a structured and more helpful way of applying the statutory test for assessing patentability which was consistent with previous decisions of the Court.
This test is quite different from the test used by the EPO, as expressed in [[T 641/00]] (Comvik/Two Identities) and [[T 258/03]] (Hitachi/Auction Method), but it is considered that the end result will be the same in nearly every case.<ref name="UKPO practice" />
=== United States ===
Section 101 of Title 35 [[United States Code|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 [[October 2005]], the [[United States Patent and Trademark Office]] (USPTO) has issued interim guidelines <ref> United States Patent and Trademark Office, [http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf ''Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility''], OG Notices: 22 November 2005 ([http://www.uspto.gov/go/og/2005/week47/patgupa.htm html]) </ref> for [[patent examiner]]s to determine if a given [[claim (patent)|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 <ref> Some new forms of [[Music_notation#Patents|musical notation]], however, have been patented in the United States. See [[Music notation#Patents]]. </ref>, compilations of data, legal documents (such as insurance policies), and forms of energy (such as [[data packet]]s transmitted 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 Patent Appeals and Interferences|board of appeals]], ''[[Ex Parte Lundgren]]''. <ref> Precedential opinion, Paper No. 78, United States Patent and Trademark Office, Before the Board of Patent Appeals and Interferences, ''[http://www.uspto.gov/web/offices/dcom/bpai/prec/2003-2088.pdf Ex parte Carl A. Lundgren]'', Appeal No. 2003-2088, Application 08/093,516 April 20, 2004 </ref> 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.
=== Practice in Canada ===
According to the Canadian Intellectual Property Office (CIPO) there are three criteria for patentability:<ref name="CIPO Practice">[http://www.cipo.ic.gc.ca/epic/site/cipointernet-internetopic.nsf/en/wr01094e.html#sec2 CIPO What can you patent?]</ref>
; new : The invention must be the first of its kind in the world. If the invention has been made public before filing for a patent, no patent will be granted.
; useful : The invention must work and have useful function.
; novel : The invention must not be obvious to practitioners in the field.
The [[Canadian Intellectual Property Office | CIPO]] says that patents may only be granted for physical embodiments of an idea, or a process that results in something that is tangible or can be sold. This excludes theorems, computer programs, or business methods.
====Computer software as patentable subject matter====
{{main|Software patents under United States patent law}}
The mathematical algorithm exception arose out of three [[Supreme Court of the United States|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 Supreme 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.
== 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; [[stem cells]]; "traditional knowledge"; [[Software patent|programs for computers]]; [[Business method patent|business method]]s.
In the process, different jurisdictions have come to different views as to what should be allowed and what should not.
Patents on business methods have proven to be a particularly controversial type of statutory subject matter. They have been criticized because the patents granted are perceived as being too broad, perhaps due to the difficulty in searching for prior art and recruiting suitably qualified [[patent examiner]]s who have historically had a science background rather than a business background. Patent applications for business methods are also subject to delays in prosecution at the [[United States Patent and Trademark Office]] and other patent offices.
== References and notes ==
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== Further reading ==
* Peter Mole, ''Economics, ethics and the subject-matter definition of the EPC'', The ''[[Chartered Institute of Patent Attorneys|CIPA]] Journal'', April 2003
== See also ==
* [[Business method patent]]
* [[Software patent]]
** [[Software patents under TRIPs Agreement]]
** [[Software patents under the European Patent Convention]]
** [[Software patents under United Kingdom patent law]]
** [[Software patents under United States patent law]]
* [[Computer programs and the Patent Cooperation Treaty]]
==External links==
* [http://patentlaw.typepad.com/patent/lundgren.doc ''Ex parte Lundgren''] (U.S. Board of Patent Appeals and Interferences, October 2005), especially the dissent of Judge Barrett, which contains a lengthy presentation of statutory subject matter following page 19.
* [http://www.european-patent-office.org/legal/epc/e/ar52.html Article 52] of the European Patent Convention
* [http://www.jenkins-ip.com/patlaw/pa77.htm#s1 Section 1 of the UK Patents Act] (UK implementation of the EPC).
* [http://www.patent.gov.uk/patent/reference/mpp/ss1-6.pdf UK Patent Office Manual of Patent Practice] section on patentability.
[[Category:Patent law]]