The Patent Light

U.S. patent law specifies the general field of subject matter that can be patented and the requirements for a patent.  The purpose of these requirements is to make sure that the bargain between the government and the inventor or applicant is “equal” or balanced.  In other words, the law is designed to prevent the patent owner from receiving a larger monopoly than the patent owner deserves.  At least, that is the theory.  Whether the USPTO accomplishes this balance is hotly debated and the USPTO has been under extreme political pressure in the last few years to make sure that patent owners receive no more than they deserve (and often less than the patent owners deserve).

In the language of the statute, any person who “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,” subject to the conditions and requirements of the law.

The word “process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes.  In addition to manufacturing processes, processes can theoretically include software, business methods, and websites.  The term “machine” used in the statute needs very little explanation.  The term “manufacture” refers to articles that are made, and includes all manufactured articles.  The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.  These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

Interpretations of the statute by the courts have limited the field of subject matter that can be patented.  For instance, courts have held that laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.  Unfortunately, courts are not always consistent and often vary their interpretation over time and as a result of political pressure.  For instance, in 1998, the Federal Circuit (which is the appellate court for patent cases) held that business methods and websites were patentable.  In 2008, after a number of patent trolls began suing numerous websites and on-line businesses, the Federal Circuit essentially changed its mind and held that business methods are not patentable.

The 2008 case and other cases went up to the U.S. Supreme Court which confirmed the patentability of business methods and software, but only if they are NOT “abstract ideas.” Unfortunately, the Supreme Court did not provide meaningful guidance regarding the definition of abstract ideas.  Currently, most lower courts have held that business methods and software are not patentable subject matter because they are nothing more than abstract ideas.  So, today, many software patents (especially patents dealing with high or “application” level software) may not be valid under current case law.

Ideas are not patentable – only Inventions are patentable!

Contrary to popular belief, a patent cannot be obtained upon a mere idea or suggestion.  A patent is granted upon an invention (e.g., a new machine) and not upon the idea or features of the new machine.  Thus, a complete description of the actual machine or other subject matter for which a patent is sought is required to be submitted in the patent application.

The grant of a patent may be thought of as an exchange, bargain, or “quid quo pro” you make with the government.  In exchange for disclosing details about how to make and use your invention, you receive a 20 year “quasi-monopoly” for the invention described in your “claims” IF the patent office believes that your patent increases public knowledge in a meaningful way.  Ideas do not increase public knowledge because ideas alone are just science fiction.  Think about Star Trek’s transporter.  It is based on Einstein’s famous e=mc2 equation, but without more, the transporter is just an idea – not an invention.

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