Patentability Patentable subject matter

A fundamental requirement for obtaining a patent is defining an advance, development, or invention which is within those classes of "subject matter" which the law of the United States regards as patentable. Two classes of patentable subject matter, ie, computer software and biotechnology, are the subject of relatively new and evolving law. However, other types of subject matter rest on fairly certain ground as to patentabiUty. Examples of patents directed to various types of subject matter are described in the following. 

Plants. AsexuaHy reproducing plants, ie, those not propagated by means of seed, also represent a legally recognized class of patentable subject matter under U.S. patent laws. Additionally, the inventor must have discovered and asexuaHy reproduced the plant that is to be the subject of the patent apphcation. Plant patents are assigned a different series of numbers than the majority of patents discussed in the foregoing, such as U.S. Plant Patent No. 3,360 titled "Peach Tree" (7). 

For example, if the invention has cleaning properties it may be a composition of matter, process, or machine, all of which are patentable subject matter. If the invention performs work, it may be a process, article of manufacture, or machine, which are all patentable subject matter. It may also be that the development of a new composition results in a composition of matter and a process of using the composition, both of which are distinct, yet patentable inventions. The various types of patentable subject matter are not mutually exclusive and may be disclosed in a single patent. 

Trade secrets may be any type of information, eg, formulae, patterns, compilations, forms, programs, devices, techniques, and processes, as weH as any patentable subject matter. However, in order for it to be a trade secret, there must be definite economic value in the information not being known to the pubHc or readily determinable by a third party. 

The initial decision—often called the VICOM decision after the applicant for the patent—was followed by further decisions of the Boards of Appeal that opened the way for the patenting of inventions implemented by means of computers. The reasoning behind these decisions has often been adopted by courts in other countries (not only in Europe, but elsewhere). The German Supreme Court, for example, has explicitly stated that the application of computers in chemistry or biology is acceptable patentable subject matter [14]. 

Patch coating, 7 24 Patchouli oil, 24 542 in perfumes, 78 370 Patcote, commercial defoamer, 8 24 It Patentability, prerequisites for, 78 172-177 Patentability searches, 18 207 Patentable subject matter, 78 165 Patent abstracts, pharmaceutical-related, 78 235-236... 

The Supreme Court considered the objective of the Ohio trade secret laws and considered that their laws were not at odds with the patent statutes. Neither removes matter from the public domain. If trade secrets were to apply only to non-patentable subject matter, an innovator would be at great risk in evaluating patentability. The court records on holding patents invalid clearly show that many inventors have invalid patents. To ask for a judgment on whether to seek protection as a trade secret or a patent puts too heavy a burden on the innovator. Quoting further ... 

Designs -patentable subject matter [PATENTS AND TRADE SECRETS] (Vol 18)... 

Can you understand why the acknowledged presence of L-arterenol (norepinephrine) in the human body did not anticipate (render not novel) any of the three listed claims If not, remember that anticipation requires that each and every limitation of the claim must be met. Note especially the requirement of each claim that requires the substances be in crystalline and substantially pure form. Products of nature are not patentable subject matter per se, but here the inventors provided the compounds in a form that they did not naturally exist in (crystalline and substantially pure). 

As a general rule, the US policy on patentable subject matters represents an extreme with the most liberal definitions. 35 USC, 101 states that "Whoever 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 therefor. 

The standard set by the EPC lies between these extremes. Many countries throughout the world have similar policies or have adopted the EPC statutes on patentable subject matter either literally or with minor modifications. It is likely that, wherever future changes of patent statutes are expected (e.g. in Eastern European and South American countries), these will also adopt at least major parts of the EPC standards. 

Definitions like those quoted above for patentable inventions in the EPC, which are mainly based on exclusions, always appear somewhat unsatisfactory. A list of examples for principally patentable subject matters in the field of biological or biotechnological medicines may provide a more positive orientation (see Table 8). It should be noted that until recently numerous countries still excluded many of these inventions. 

A patent must end with one or more patent claims which describe the patented subject matter as unambiguously as possible. Patent claims may be considered as the definition of the patent scope for legal purposes. The precedent patent description has to justify all aspects of the patent claims and will be used for this purpose during the examination process. But only in cases of doubt will details of the patent description be used later on to interpret the patent claims. Thus, patent claims must be formulated with the utmost care. The three basic requirements novelty, non-obviousness and utility have to apply to... 

Member states can object to granting a patent in their territory, a provision which is necessary because member countries have no common policy on certain statutory exclusions of patentable subject matter. Member states of the ARIPO are Botswana, Ghana, Kenya, Lesoto, Malawi, Sudan, Swaziland, Uganda, Zambia and Zimbabwe. Sierra Leone, Somalia and Tanzania have not yet signed the Harare Protocol. 

Patentable subject matter is ... any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof Patent laws provide that patents may be granted only for inventions that are deemed to be new and useful. These requirements exclude pharmaceutical inventions that have not been shown to be reasonably safe and effective and chemical compounds that have no use except as intermediates for additional research. However, some special considerations have traditionally been applied in the case of chemical compounds, particularly those possessing therapeutic or pharmacological activity. A compound that is useful as an intermediate for the manufacture of a pharmacologically active compound may be claimed and afforded patent protection because it satisfies the utility requirement and is considered to be useful. Further, a compound need not show therapeutic utility in humans to meet the utility requirement of patentability pharmacological activity in animals or in vitro activity is considered sufficient in some cases. If the patent application purports to claim the use of a compound for the treatment of humans, the inventor must show that the compoimd is both safe and effective in humans. 

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