What is the relationship between 35 U.S.C. 101 and other patentability requirements?
While 35 U.S.C. 101 is a crucial tool for determining patent eligibility, it is not the sole criterion for patentability. The MPEP clarifies:
“Examiners are reminded that 35 U.S.C. 101 is not the sole tool for determining patentability; 35 U.S.C. 112, 35 U.S.C. 102, and 35 U.S.C. 103 will provide additional tools for ensuring that the claim meets the conditions for patentability.”
The Supreme Court in Bilski v. Kappos further emphasized that the 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies under 101, it must still satisfy the other requirements of the Patent Act, including novelty (102), non-obviousness (103), and proper description (112).
Therefore, a complete examination should address all patentability requirements, regardless of whether a 101 rejection is made.
To learn more: