Legal requirements for patentability 4

Question 1

Patentable subject matter/patent-eligible subject matter

Answer 1

1. fundamental
2. eligibility functions as gatekeeper or threshold to further patentability questions ie novelty or inventive step (non-obviousness) –> neither worth assessing unless the invention qualifies as patentable subject matter.

Question 2

Patentable subject matter (US)

Answer 2

1. Positively defined in US patent law and claimed invention must fall within any of the four categories: “Any new and useful process, machine, manufacture, or composition of matter”.
2. no statutory definition of what cannot be patented;
3. categories that cannot be patented incl. “abstract ideas”, “laws of nature” and “natural phenomena”.

Question 3

Patentable subject matter (Japan)

Answer 3

1. Statutorily defined as “a creation of a technical idea utilizing a law of nature”

Question 4

Patentable subject matter (EPC)

Answer 4

1. no positive definition
2. non-exhaustive list of nonpatentable inventions:
   - discoveries, scientific theories; aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers; and presentations of information.
   - excluded if claims are directed to this subject matter “as such”/technical character.
3. eligibility is mostly questioned when claimed invention relates to computer-implemented inventions (e.g. software-related invention), business implementation inventions and biotech.

Question 5

General exclusions

Answer 5

1. where prevention of the commercial exploitation of an invention is necessary to protect order public or morality.
2. diagnostic, therapeutic and surgical methods for treatment of human or animals. (exclusion does not apply to products designed for use in any of these treatments)
3. plants and animals (other than micro organisms) and essentially biological processes (other than microbiological processes).