Section 101 - Is your invention patent eligible?


§ 101 and the judicial exceptions

Section 101 of the Patent Act requires that an invention be new and useful. In addition to the new and useful requirement, there are three judicial exceptions to patentability. Judicial exceptions prevent an application from being granted where the invention improperly captures a natural phenomena, abstract idea, or law of nature. For example, a patent cannot be granted on a new mathematical formula by itself, but might be granted if the invention ties the formula to a machine.

A rationale behind preventing patents on judicial exceptions is that doing so will lock up the entire abstract idea or law, precluding others from utilizing it in any other application. A patent of this type would be overly broad and the invention would be denied patent protection. The inventor, therefore, must take steps to ensure their invention does not simply claim the judicial exception alone.

What inventions qualify under §101?

To get around the §101 hurdle, the inventor must either (1) claim an invention that is not directed to a judicial exception, or (2) claim an invention which is a judicial exception, but where the inventor adds "something more." So, what qualifies as something more?

Simply applying conventional steps which implement a judicial exception is not sufficient. For example, the Supreme Court ruled in Mayo that claiming the relationship between the concentration of a metabolite to determine the proper dose of a medication was not patent eligible. The Court stated that metabolite concentration is a law of nature, and simply measuring this concentration and adjusting the dose did not clear the § 101 hurdle.

Other cases interpreting § 101 include using a computer to mitigate investment risk (patent-ineligible), integrating a mathematical formula in a vulcanization machine (patent-eligible), and the playing of an advertisement in exchange for watching free copyrighted programming (patent-ineligible). 

Need help determining whether your invention is patent eligible?

Determining what qualifies as patent eligible is tough, however it has become simpler as the Supreme Court has made several rulings on §101. If you have any questions about whether your invention qualifies under § 101 contact me here.