How does the USPTO handle claims that cover both statutory and non-statutory embodiments?
The USPTO has specific guidelines for handling claims that cover both statutory and non-statutory embodiments. According to the MPEP: “A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1:…
Read MoreWhat are the limitations on patenting ‘products of nature’ under USPTO guidelines?
What are the limitations on patenting ‘products of nature’ under USPTO guidelines? The USPTO has specific guidelines regarding the patentability of ‘products of nature’ as outlined in MPEP 2106.03. While natural products fall within the statutory categories of invention, they are subject to additional scrutiny: “Products of nature are considered to be an exception because…
Read MoreHow does the USPTO determine if a claim falls within a statutory category?
The USPTO determines if a claim falls within a statutory category through Step 1 of the eligibility analysis. As described in MPEP § 2106, Step 1 asks: Is the claim to a process, machine, manufacture or composition of matter? The MPEP provides guidance on this process: The claim should be evaluated using its broadest reasonable…
Read MoreHow does the USPTO define a “process” for patent eligibility?
How does the USPTO define a “process” for patent eligibility? According to MPEP 2106.03, a “process” for patent eligibility is defined as follows: “A process defines ‘actions’, i.e., an invention that is claimed as an act or step, or a series of acts or steps.“ The MPEP further clarifies that a process is not limited…
Read MoreHow does the USPTO define ‘composition of matter’ for patent eligibility?
How does the USPTO define ‘composition of matter’ for patent eligibility? The USPTO defines ‘composition of matter’ as one of the four categories of patent-eligible subject matter under 35 U.S.C. § 101. According to the MPEP 2106.03: “Compositions of matter” are chemical compounds, mechanical mixtures, gases, and other materials. This category encompasses: Chemical compounds (e.g.,…
Read MoreHow is a ‘process’ defined for patent eligibility purposes?
A process, for patent eligibility purposes, is defined as a series of actions or steps. The MPEP cites the Supreme Court’s definition from Gottschalk v. Benson: “A ‘process’ is ‘a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to…
Read MoreWhat types of inventions are considered non-statutory subject matter?
According to the MPEP, non-limiting examples of claims that are not directed to any of the statutory categories include: Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as…
Read MoreWhat are the differences between machines and manufactures as patent-eligible subject matter?
What are the differences between machines and manufactures as patent-eligible subject matter? Machines and manufactures are two of the four categories of patent-eligible subject matter defined in 35 U.S.C. § 101. While both are tangible inventions, they differ in their nature: Machines: Concrete things consisting of parts or devices. The MPEP states, “A machine is…
Read MoreWhat is the difference between a machine and a manufacture in patent law?
In patent law, machines and manufactures are two distinct categories of statutory subject matter. The MPEP provides definitions for both: Machine: “A machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This category ‘includes every mechanical device or combination of mechanical powers and devices to perform some function…
Read MoreWhat are the four categories of statutory subject matter in patent law?
What are the four categories of statutory subject matter in patent law? The four categories of statutory subject matter in patent law, as defined in 35 U.S.C. § 101, are: Process Machine Manufacture Composition of matter As stated in the MPEP 2106.03: “The Supreme Court has acknowledged that Congress intended statutory subject matter to ‘include…
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