Patent Eligibility: What Can and Cannot Be Patented

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( — August 2, 2023) — Before applying for a patent, it helps to understand what can and cannot be patented. The United States Patent and Trademark Office (USPTO) has established guidelines on what can and cannot be patented. One of the most common questions about patents is related to patent eligibility. The answer to these questions can often be complicated, and in some cases, you might need the assistance of an intellectual property lawyer. In this article, we provide an overview of patent eligibility. 

Understanding the Objective of a Patent

The U.S. Patent Act helps protect the rights of inventors while promoting an environment of innovation where companies and individuals do not fear that their innovations will be copied or misused by others.

 A patent is a type of intellectual property protection that provides the patent holder exclusive rights to the invention. A patent can also be issued for a unique and distinct improvement to an existing product, process, or chemical composition. 

The patent holder has the right to sell the invention to a third party or to license the patent to others in return for royalty fees They also have the right to sue for damages if any company or person infringes on the patent. 

What Can be Patented? 

According to the USPTO, for an invention to be patented, it has to be patent eligible, new, useful, and non-obvious. Another requirement is that patent description should be done in a manner that people with reasonable skills in the relevant industry or technology can understand what the invention is. 

There are different types of patents: design patents, utility patents, and plant patents. Each patent has its unique characteristics, including eligibility criteria. Patent eligibility requirements are often misunderstood. The Patent Act states that a utility patent can be obtained for any machine, process, article of manufacture, or composition. 

The United States has a broad standard of what constitutes a patentable subject matter. Subject matter eligibility is typically not a concern for inventors of physical objects as the U.S. standards appear to cover an extremely wide range of inventions. However, the situation can be slightly more confusing with software, mobile phone apps, or certain medical tests. For example, if software data structures do not fall under the four statutory categories: processes, compositions of matter, machines, or articles of manufacture. This is why experienced intellectual property lawyers often claim software or medical tests in the content of a process or machine. 

Here are more specifics on what can be patented based on the type of patent:  

Design Patent

A design patent offers legal protection for the visual qualities of a manufactured item. This includes distinct surface ornamentation, configuration, or a combination of both. The items need to have some practical utility for a design patent. Some examples of items that can be protected with a design patent include ornamental designs on an automobile, jewelry, packaging, furniture, and computer icons.

Utility Patent

A utility patent offers legal protection for an improved or new invention that is either a machine, product, or process. This type of patent is often referred to as a patent for invention, but it has a wider scope as it can be used for unique, useful, and distinct improvement on an existing item. Examples of utility patents include computers, engines, pharmaceuticals, and business processes. 

Plant Patent

A plant patent is less commonly used as it has a limited scope. With this type of patent, you can protect new and unique plant characteristics from being used, copied, or sold by other companies or individuals. Some examples of existing plant patents include the Honeycrisp Apple, which has a unique crisp texture and sweet flavor, and the Peace Lily, which has unique characteristics of white blooms and dark green foliage.

Consult with an Intellectual Property Lawyer

If you are not certain what can and cannot be patented, it is best to consult with an intellectual property lawyer.  They are well-versed in intellectual property law and help you with various legal processes related to patents, including searching for existing patents or suing a party for patent infringement. They also help with all paperwork required to secure and maintain a patent.