Patent Process

What Can Be Patented and What Cannot?

By December 10, 2018
Goldstein Patent Law

It stands to reason that the most common question we’re asked at Goldstein Patent Law is: “Can this type of thing be patented?”

The answer to that questions depends on whether your invention or product idea meets the three criteria for patentability that the United States Patent and Trademark Office (USPTO) examiner looks at when evaluating a patent application: Patentable subject matterNovelty, and Non-obviousness. This article explains “patentable subject matter.”

“Patentable subject matter” is a legal term that means simply, the types of products or ideas that can be patented. And the question, “Is what I have patentable subject matter?” is called a threshold question because, while there are other requirements for patentability, the question of whether there is patentable subject matter is the first one that must be considered when seeking a utility patent. Any idea must first be found to be patentable subject matter.

There are four main categories of patentable subject matter:

1. Machine: a functional item that consists of parts that interact. Generally, it has moving parts.

2. Manufacture: an object that might lack moving parts, yet provides a function. For example: a shovel lacks moving parts but its shape allows it to perform a function.

3. Composition of Matter: a combination of chemicals. For example, a hair care product, a pharmaceutical, or a cleaning product that consists of a combination of ingredients.

4. Process: a set of steps for doing something. This category traditionally has been used to protect methods of manufacturing, but more recently has become the category used to protect business methods and computer software.

These categories were created long ago, but most physical and functional inventions will still fit at least one of the first three categories. The last category (Process) has been the subject of much of debate in recent years. Several major cases have been decided by the U.S. Supreme Court in an attempt to clarify what “processes” qualify for patent protection. For this reason alone, in many cases, you need someone experienced and qualified to make the best determination as to whether your business model or process may qualify as patentable subject matter.

If you think your product or invention falls into one of these four categories, then it’s important that you have a professional evaluation conducted to see if your invention meets the other two requirements for patentability: Novelty and Non-obviousness.