Talk:Patentability/Archives/2012

Patentable subject-matter -- order of patentability criteria

Good idea to create an article on Patentable subject matter, but why inserting this criterion after novelty in the patentability article and in the template? In European patent law, an invention is first examined in order to see whether it relates to excluded subject-matter, then novelty is examined. Is it different under United States patent law? We may have to find a compromise. --Edcolins 11:40, 17 October 2005 (UTC)

As I understand it, in the UK a patent application can be knocked out on any of the patentability grounds at any stage in the patent office process, as the nature of what is new about the patent becomes clearer, and more investigation is done into the previous state of the art.

As Mr Prescott QC found in CPFH's Application, a preliminary sanity check can sometimes settle the question of Article 52, but not always: rather, the tests must be taken together - to be patentable, what is new and non-obvious about the invention must also be patentable subject matter.

The reason I preferred the order I chose, is that it seems IMO the sequence which best goes from the most general and fundamental first, to the most special and particular last -- and so this is the best order to present them to a layperson, reading about patentability for the first time.

First, and most fundamentally for a layman, an invention must be new -- because that is the whole purpose of the patent system, to encourage the development of new things. Secondly, an invention must be new, and not one of the few things excluded from patentability. Thirdly, an invention must be new, not excluded, and sufficiently different from what has gone before. Fourthly, it must not be a perpetual motion machine.

That's why I think it makes sense to present the tests in this order.

-- Jheald 14:27, 17 October 2005 (UTC)

I must respectfully disagree. Under Art. 52(1) EPC (on which are based the similar provisions of the UK patent act), "European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step." Thus four things need to be assessed:

1. whether there is an invention,
2. whether the invention is novel,
3. whether the invention involves an inventive step, and
4. whether the invention is susceptible of industrial application.

The second, third and fourth criteria need to be examined only if there is an invention. The first question to ask then is "is there an invention?" The EPC does not explicitly provide any "positive" guidance to decide what is an invention. However in Art. 52(2) EPC, it provides a nonexhaustive list of what are not regarded as inventions: "(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." Art. 52(3) further provides that "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."

Under the EPC, the questions "Is there an invention?" and "Is the claimed subject-matter excluded from the realm of patentable subject-matter?" are equivalent. The invention test or patentable subject-matter test necessarily precedes the novelty and inventive step tests, which cannot be carried out when there is no invention (see Art. 54(1): "An invention shall be considered to be new if it does not form part of the state of the art." and Art. 56(1): "An invention shall be considered as involving an inventive step (...)").

What T 258/03 [1] said is that, "[within the inventive step test], the invention will be assessed (...) by taking account of only those features which contribute to a technical character", i.e. the features which are not excluded as unpatentable subject-matter as a matter of policy (thus reintroducing at a "feature level" patentable subject-matter considerations, but only at a secondary level, not at the entire "claim level"). What Mr Prescott QC basically said [2] is that the approach of introducing patentable subject-matter considerations during the examination of novelty and inventive step is a good thing to do. That does not mean however that abstract ideas need to be examined as to novelty if there are directly considered excluded under Art. 52(2) and (3). --Edcolins 20:34, 17 October 2005 (UTC)

Indeed. As I wrote above, sometimes the question of Article 52 can be disposed of one way or the other straight off, with a simple preliminary sanity check; but not always.

In terms of workflow, I doubt there's any great distance now between the UKPO and the EPO on this. But what seems slightly odd to those of us not resident in Munich or the Hague is that apparently the EPO want that a rejection might turn entirely on whether what is new and non-obvious is or is not permissible under Article 52 -- but then get called an Article 56 (inventive step) rejection!!?

Either way, it is evident that just because an claimed invention gets through its initial Article 52 test, that doesn't mean it is then clear of "patentable subject matter" considerations.

Anyway, this is beside the point. The reason for putting novelty first is that it is the simplest idea to understand, and the most real world. It's the only one on the list that we're currently happy to leave as just a one-word link. It's also the thing that an inventor is likely to be able to ask (and answer) first - is this new? - before getting into the arcana of the list of things which are excluded. -- Jheald 21:45, 17 October 2005 (UTC)

The EPO approach appears rather sound to me. Within the inventive step test, some sort of "zoomed in" patentable subject-matter test, also called technical test, is performed. The basic assumption is that the "technical problem" of Rule 27(1)(d) and the "technical features" of R. 29(1) correspond to the approach of Art. 52(2). Of course this can be discussed at length. The old contribution approach (T 36/86) could also be blamed for being misnamed. It was a disguised inventive step objection.

So, this is basically a matter of ordering the template items according to

• how straightforward is it to grasp them, or
• in which sequence they are tackled during examination.

What about requesting comments on this on Wikipedia talk:Navigational templates? --Edcolins 10:24, 18 October 2005 (UTC)

• The dissent in this recent opinion has a VERY long (like 70 pages) discussion of the patentability requirement in the U.S.[3]. This comes along with the very big removal of Technological Arts requirement for methods patents. Mmmbeer 23:37, 17 October 2005 (UTC)

Inventorship?

Can anybody explain why inventorship is regarded as a patentability criterion in the United States? I am all at sea when it comes to U.S. inventorship. Thanks. --Edcolins 10:24, 18 October 2005 (UTC)

• In short, it's a constitutional requirement. Congress' ability to grant patents is authorized only for the patentee. Mmmbeer 10:45, 18 October 2005 (UTC)
  • Alright. Thanks. --Edcolins 11:59, 18 October 2005 (UTC)
    • No problem. I should also probably say that while a patent may be taken out by a patentee's assignees, it must still name the original inventor(s). You have to remember that US Patent law is based on the first-to-invent, so it really is a bar--albeit very low--to obtaining a patent. Mmmbeer 17:36, 18 October 2005 (UTC)
      • Would it be then correct to state in the Inventor (patent) article that "An inventor cannot opt out from being mentioned as such in a U.S. patent, even if the patent application was assigned before publication"? That would be interesting to add. --Edcolins 12:00, 19 October 2005 (UTC)
        • I believe that is true. Assignment of rights in a patent doesn't alter to whom the patent is actually issued. In fact, I believe that it's safe to say that an assignee may only have an equitable interest in the patent until it's issued and then legal interest would transfer automatically. Mmmbeer 12:56, 19 October 2005 (UTC)
          • I have added the information in Inventor (patent). --Edcolins 14:19, 19 October 2005 (UTC)
            • Should we add an article Assignment (patent)? At least in U.S. patent law, transfer of title in a patent is governed by statute: 35 U.S.C. §261. Among other things, it requires it in writing and codifies a Bona fide purchaser for value rule. Mmmbeer
              • Good idea. But what about a slightly more general article called Transfer (patent), covering transfer of patent or patent application by transaction (e.g. assignment, merger) or by operation of law (e.g. succession, bankruptcy/insolvency)? --Edcolins 20:24, 19 October 2005 (UTC)
                • Sure, that'll work. In the U.S., it's all the same though--they're all assignments. Mmmbeer 20:38, 19 October 2005 (UTC)

Temporary information

Below is a copy of material I have just removed from Patent that we may wish to include here. Kcordina ^Talk 08:56, 11 April 2006 (UTC)

The standard for what is patentable subject matter in most countries is any man-made invention that is new (novel), useful, and non-obvious. Some countries exclude specific categories of such inventions. Under the European Patent Convention (EPC), for example computer programs, as such, are not patentable. In other countries, patents on pharmaceuticals are not allowed. Almost all countries prohibit patents on mathematical formulae, abstract ideas, laws of nature and the like.

Under U.S. law, a claimed invention is deemed useful if, at the time of filing, it is capable of providing some identifiable benefit (to a person of ordinary skill in the art of the invention). The benefit must be specific, substantial, and practical.

Generally speaking, there are three broad categories of patentable subject matter: processes, machines and articles of manufacture and use.

A process could be a method for making something, a method for using something, or a method for doing something. Processes include business methods, most software, medical techniques, sports techniques, and the like. Machines include devices and apparatuses. Articles of manufacture include mechanical devices, electrical/electronic devices and compositions of matter such as chemicals, medicines, DNA, RNA, etc.

Because laws of nature, physical phenomena, and abstract ideas are not patentable, software inventions implementing algorithms are not patentable unless the software produces a "useful, concrete, and tangible result" (U.S. law) or technical effect (European law). The U.S. standard for the patentability of software is considered to be more liberal than that in Europe, while Japanese patent law is considered to lie between the two.

The patentability of software (and business methods) is quite controversial from a global perspective. Case law in the United States permits patents for software and business methods. Yet computer programs as such are not patentable in Europe, although some inventions that use software can be patented in Europe.

Patents related to natural compounds (e.g. items found in rainforests) as well as medicines, medical treatment techniques, and genetic sequences are also controversial. There are significant country-by-country differences in handling these subject matters. For example, in the United States you can get a patent for a surgical method but you cannot exclude physicians from performing the surgical method.

Link Rot

Endnote 3 has rotted. 71.87.209.186 (talk) 19:56, 13 December 2012 (UTC)

Fixed now. Thanks for your note. --Edcolins (talk) 20:52, 14 December 2012 (UTC)