Watson IP Group

Watson IP Group

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Patentable Subject Matter: What Can Be Patented and What Cannot Be Patented?

From a utility patent standpoint, inventions that are patentable include any new and useful process, machine, manufacture, or composition of matter. Additionally, any new and useful improvement to any of the foregoing are also patentable, as long as they are novel improvements and non-obvious improvements.

Non patentable inventions include inventions that are abstract subject matter, theories, things that occur in nature and the like. One area of considerable current legal tension is in the area of patentability of software based patents. In some instances, some software inventions may be an abstract idea and therefore not patentable. Other software can be deemed subject matter that is patentable. This area of the law is in considerable flux and determinations as to patentability are the subject of significant debate.

First, utility patents are used to protect new and useful inventions, including mechanical, and electrical devices, software, manufacturing processes and production methods, and any number of different products. Some examples of utility patents include mechanical devices (a medical device, a bag or a box, a brake caliper, a hanger, etc.), electrical devices (i.e., improvement to a toaster, a microwave, a sensor, solar panels, etc.), electronics (i.e., power supply, circuitry improvements, radio antenna designs, etc.), methods or processes (i.e., extracting improvements with the extraction of gold from ore, removal of sulfur from hydrocarbon fuel), a system (i.e., several machines together for welding automotive assemblies, etc.), software features (swipe to unlock, pull down to refresh, etc.). Generally, these include all types of inventions that have functionality.

From a design patent standpoint, a design patent provides protection for the ornamental design of something that has a practical utility. Examples include the ornamental design of a Christmas tree ornament, a bottle shape, the ornamental design of a mouse or a laptop, the ornamental design of a refrigerator door, or a cabinet door, the ornamental configuration of an smartphone application icon, or screenshot.

In many instances, an inventor has a misconception of what is necessary to be patentable subject matter. Most often, new inventions build upon prior inventions, and most typically are an improvement to an existing device, method, system, software, etc. And, our IP lawyers are here to say that these types of improvements are absolutely patentable subject matter. While the invention of the wheel is known, there are thousands of patents being granted on such aspects as tire construction, tread design, inflation methodology, among others. While the automotive engine is known, there are thousands of patents being granted on piston construction, engine management, valve train design, variable valve timing, combustion chambers design, among others. On the design patent side, while the cup is known, there are thousands of design patents on various ornamental designs of a cup. Similarly, there are thousands of design patent on various smartphone and desktop icons and graphical user interfaces. Moreover, there are thousands of design patents on children’s toy vehicles.

In sum, innovation, large and small, can be patentable subject matter. A small incremental improvement can have tremendous value, despite the small scope. For example, an improvement in electrical efficiency of a refrigerator that improves efficiency by 1% can have a dramatic effect on energy consumption when that savings is multiplied across the millions of refrigerators currently running in the US.

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