What can be patented? What is patentable and what’s not?

The patent law statute makes clear that there are specific categories of what can be patented, and there are certain categories of inventions that fall outside the realm of what is patentable. In fact, there are only four legally-defined “classes of patentable subject matter.” The good news: if you have an INVENTION, as opposed to an unpatentable idea, chances are it falls into one of the four categories of what can be patented. The majority of inventors I speak to have no problem with whether their invention is patentable subject matter.

This is because Congress intended to define what can be patented to include “anything under the sun that is made by man.” However, you should make this analysis early on in the invention process, because it is one of the first and most significant patent hurdles you need to overcome, and is one of the first things your patent attorney will look at. Also, if you discover early on that you fall outside of what can be patented, it’s often possible for a patent attorney to help you reframe your invention idea into a patentable invention.

The realm of what can be patented

Processes and Methods Patents

All categories of what can be patented are either processes or products. Three of the four classes of patentable subject matter are products, as discussed below. But the first category of patentable inventions we’ll look at is processes. A process, for the purposes of patents, is essentially a way of doing something, and it can be a method, an operation, or a series of actions intended to achieve some result.

A key distinction here is that when you’re patenting a process, only the process itself has to be patentable (meaning it’s new and useful). This means that the result of the process – the something getting done or the product being made through the process – does NOT need to be new or qualify as a patentable invention. This is because when patenting a process, you’re not patenting the result of the process (unless you want to, as discussed below).

For instance, even though product X has already been patented and is now no longer a patentable invention, if you invent a new way of making that product through some new manufacturing process, that process is within the universe of what can be patented. In this situation, it might be valuable to investigate how to license your process patent or even sell it completely to the current maker of that product so they can use your new, better process for making their product. Your patent attorney can guide you through the negotiations.

Product Patents

Aside from processes, the realm of what can be patented spans three categories – but all three categories are types of products. The first class of patentable inventions in the product category is machines. A machine includes any device or combination of devices that has parts. The parts can be moving parts or fixed in place – but the parts work together to provide some function.

The next class of patentable inventions is manufactures – also called articles of manufacture. This includes any article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery. Examples of manufactures are cast metal objects, ceramics, glass objects, clothing, and paper.

The final class of patentable inventions is compositions of matter. These also are product inventions. These can include mixtures of ingredients, formulas, chemical compositions, chemical compounds, and any composite articles. It doesn’t matter whether the invention formed by a chemical reaction or just mechanical mixture – as long as it has two or more ingredients. These inventions can be in the form of solids, powders, liquids, or gases. A cleaning solution or a new medicine are patentable inventions in this category.

Improvement Patents

Most importantly, the realm of what is patentable isn’t just limited to completely new inventions. An improvement or an added feature of an already existing invention is also legally considered a patentable invention. But as you can probably guess, the improvement or added feature must be classifiable as one of the four classes of patentable inventions (processes, machines, mAsk a patent attorney about monetizing your invention ideaanufactures, or compositions). In fact, improvement inventions are actually the most common type of invention that patent attorneys deal with.

Whichever category your invention falls under, you need to ask your patent attorney how he plans to expand the scope of your invention to the greatest extent. Remember, anyone can draft a patent application, but the value in a good patent attorney is in the breadth of protection he can acquire, and this takes an additional investment in time and creativity on the part of the patent attorney. The end result is a patent that has much greater financial value and stops a much wider range of competitors.

What can be patented using utility vs. design patents

Inventions and improvement inventions in these four categories are eligible for a utility patent, as long as the other requirements of patentability are met. But if your patent attorney informs you that your inventions doesn’t meet all the other requirements for getting a utility patent, you still have the option of a design patent.

The category of your invention is one of the primary factors a patent attorney will use in determining your options. For example, a process invention will be automatically ineligible for a design patent. And if your invention is best suited for a design patent, then you’ll be precluded from filing a provisional patent application.

It’s best not to get your heart set on any one type of patent application before talking to your patent attorney about which options are available in your scenario. This is because your patent attorney can first look at what class of patentable subject matter you have and then analyze the prior art against this background to determine your most viable options.

Outside the realm of what can be patented

The four classes of patentable subject matter above leave the doors pretty wide open on what can be patented. Since, as discussed, these four categories were intended to include “anything under the sun that is made by man,” it will be helpful now to look at the classes of things that are categorically ineligible for a patent.

There are three categories of subject matter for which you can’t get a patent no matter what, even if all the other requirements of patentability are met. If your invention falls into one of these categories, your patent attorney may be able to help you qualify under the exception below.

These categories are laws of nature, natural phenomena, and abstract ideas. Laws of nature are things like gravity, Einstein’s law of E=mc2, and electro-magnetism. Natural phenomena essentially are facts of nature or elements that exist in nature – things like fire, lightening, or the decay of Carbon 14. And an abstract idea is essentially a principle – a fundamental truth – and this includes things like mathematical formulas and algorithms.

These things were specifically excluded from what can be patented because they aren’t things that can be invented in the first place. Rather, they are discovered. They’re not “made by man,” and you can’t patent things that God created – those are His inventions, He didn’t patent them, and now they’re in the public domain where no patent attorney can stake a claim to them!

One exception

There is one exception that allows ideas related to the non-patentable categories to become patentable inventions. This is when your invention includes a practical application of one of these things to perform a real-world function. In this circumstance, that application of the law, natural phenomenon, or abstract idea may be a patentable invention. But a discovery without a practical application is categorically outside of what can be patented, no matter how good your patent attorney is.

For instance, when Samuel Morse invented the world’s first email (back then called telegraph), he tried to patent his electro-magnetic telegraph AND electro-magnetism. He wasn’t able to get a patent on electro-magnetism because it was considered a law of nature, but his application of electro-magnetism – the telegraph – was a patentable invention.

Same principle with natural phenomena: you can’t get a patent on lightening, but possibly Benjamin Franklin could have patented his kite with a key attached as a system for determining if lightening has an electric charge.

And as for abstract ideas, if you have a practical application of an abstract idea to solve some problem, then it’s no longer abstract anymore and may be a patentable invention. But it’s not always quite that simple. Often, such as in the area of software for example, it can be difficult to be sure whether your invention includes a sufficient level of practical application.

What is a sufficient level? Unfortunately, that’s a question that’s often decided by the patent examiner assigned to your matter at the USPTO, and his decision is guided by case law and USPTO guidelines. And, two different patent examiners at the USPTO may decide the matter differently. Luckily, a knowledgeable patent attorney can determine whether you have a patentable invention upfront fairly accurately, and draft your patent application in a way that maximizes your chances of cruising through the USPTO.

Instant Recap

What can be patented? Four things: processes, machines, manufactures, and compositions of matter, including improvements on any invention within these categories. What can’t be patented? Three things: laws of nature, natural phenomena, and abstract ideas.

If at this point you’re thinking that your invention may be ineligible for a patent, keep in mind that a good patent attorney may be able to help you better frame your invention idea in terms of the application you have in mind, thus making it a patentable invention. Or it’s possible that part of your invention may not be patentable while part of it is.

For specific inquiries about how the above info applies to your situation, contact Dan Weglarz, Esq., patent attorney, Long Island, NY. The above is only general educational information for your benefit and is not considered legal advice.