Patent Law – Three Minute Legal Tips

A patent is a form of intellectual property that protects inventions. It is obtained by filing an application with a patent office. Generally, the inventor must demonstrate that their invention is useful and not obvious.


A granted patent confers a monopoly on the inventor to exclude others from making, using, offering for sale, selling, or importing the invention. The term of a patent is usually twenty years.

Patentable subject matter

A patent is a legal instrument that grants the inventor a monopoly on an invention. It contains numbered claims that describe the legal aspects of the monopoly and include a description of the invention, an inventive step, and how it works. In addition, patents contain background information and references to previous publications or works in the field. The patentability of an invention is determined by two criteria, one statutory and the other judicial. Statutory patentability requires that the invention be either a process, machine, manufacture, or composition of matter. It also must not fall into a judicial exception, which includes laws of nature, physical phenomena, and abstract ideas.

To be patented, an invention must be new and non-obvious. The USPTO tests this by asking whether it would have been obvious to someone skilled in the field of the invention. This person is typically a hypothetical person, but could be any person familiar with the subject matter of your invention.

For example, if you invented a new way to interchange data between a smartphone and a thermostat, the USPTO will test whether that is a patentable invention. It will also consider whether it has any markedly different characteristics from the prior art. A patent examiner can identify a product’s characteristics by looking at the claim language, and determining what is recited in the claim.

Patentable claims

In a patent, the claims define the scope of protection granted. The claims are like property lines on a deed that identify the limits of the land that the owner has a right to exclude others from trespassing or infringing. The claim is the most important part of a patent, as it defines the invention and protects it against unauthorized use. Claims should be drafted carefully to avoid causing confusion. Some words used in a claim have specific legal meanings established by prior court decisions, so the language used in a patent must be precise.

Generally, independent claims have greater scope than dependent claims. A product must satisfy all the requirements of an independent claim in order to be found to infringe that patent. For example, if a patent claims two features, AB, an accused product must include all of the features in order to infringe that patent. Conversely, if a patent contains a single feature, BB, an accused product must only include that one feature in order to infringe the patent.

When considering patentability, the statutory categories are process (method) claims, machine claims, manufactures, and compositions of matter. However, printed matter such as information and signals do not fit into any of these categories and are not considered patentable in the US. However, they are patentable in Europe.

Patentability of printed matter

Over time a number of US courts have developed a non-statutory judicial exception to patentability that applies to printed matter. The exception reflects the principle that subject matter is patentable only when it is an actual manufacture, and not simply a presentation of information or data. This principle is applied to determine whether an invention meets the requirements of 35 U.S.C. SS 101, and the novelty and obviousness requirements of 35 U.S.C SS 102 and 103.

This is sometimes referred to as the “printed matter” doctrine or the “mere printed matter” rule. The principle is based on a number of underlying policy decisions that go back to 1879. These policies are primarily that a patent cannot be obtained on an abstract idea or thought, and that the mere addition of words or text to something that existed before does not deserve the limited time monopoly that is a patent.

The issue is particularly important with respect to software inventions. Traditionally any computer program embodied in a tangible medium such as floppy diskettes has been considered unpatentable, because it is essentially printed matter characterised solely by its content. But the decision in In re Lowry, which was made just five months after Warmerdam, appears to have struck down the Printed Matter Doctrine with respect to software, at least as applied to computer-related inventions.

Patentability of business methods

A patent is a legal right to exclude others from using an invention for 20 years. It is a way to protect your business from competitors that might try to copy it. However, it is important to understand the criteria for patentability and how they vary between countries. In this episode of Three Minute Legal Tips, we discuss the patentability of business methods.

A business method patent is a type of patent that covers a method for conducting business. This includes processes that incorporate technology, such as a self-opening pill bottle or an automated ordering system. Although many people think of patents as only granting rights to concrete inventions, business method patents allow a broader range of inventors to secure protection.

Business methods must meet four requirements to be patentable. First, they must be novel. This means that the method must not have been disclosed before in a public publication. The second requirement is nonobvious. This test is usually determined by examining whether the new method would be considered an obvious development to someone with ordinary skill in the field of the invention.

Finally, the method must be useful. This is the simplest requirement to meet, but it can be difficult to prove. For example, a new method may reduce the time it takes to process payments or make deliveries, or increase efficiency in obtaining customer data.