First to File: Patents for Today's Scientist and Engineer

Chapter 9Patent Eligibility: Pushing the Envelope on Subject Matter Appropriate for Patenting

The merits of an invention—its novelty, nonobviousness, and utility—determine its patentability, but the question of whether the subject matter of an invention is eligible for patenting asks whether the merits of the invention should be considered at all: Is this the type of invention that patents should be granted on, or is it an attempt to claim something that is too fundamental to commerce, industry, life, or nature to be made the exclusive property of an individual or a commercial entity, regardless of the ingenuity and resourcefulness behind its creation or discovery? Laws of nature, physical phenomena, and abstract ideas are recognized by the patent system as being patent ineligible for this reason, but as we shall see, the words themselves do not tell us where to draw the line. In many cases, these three categories are not even distinguishable from each other. The major problem that patent eligibility addresses however is that when the Information Age supplanted the Industrial Age, and as technology in all fields continues to advance to levels that were unimaginable centuries ago (when the first U.S. patent law was enacted), or even decades ago, the rules that determine what should or should not be patent eligible were, and are continually being tested, challenged, and often found to be no longer adequate.

Patent eligibility is not a question of breadth of coverage. Admittedly, ...