Legal Memorandum: Inventions Patentable

Issue: Patenting a Business Concept or Idea

Area of Law: Intellectual Property Law
Keywords: Patentable process; Invents or discovers any new and useful process
Jurisdiction: Federal
Cited Cases: 412 F.3d 373; 239 F.3d 1343; 409 U.S. 63
Cited Statutes: 35 U.S.C. § 101; 15 U.S.C. § 1056; 17 U.S.C. § 401(b)
Date: 07/01/2006

Plainly, a patent may be granted to one who “invents or discovers any new and useful process.”  35 U.S.C. § 101.  The courts have clearly drawn the line, however, between a patentable process and an unpatentable idea or concept.  Yet, “[t]he line between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear.”  Parker v. Flook, 437 U.S. 584, 589 (1978).  As the Second Circuit vividly describes:

In discussing process patents courts have held that scientific truth, mathematical formulas, phenomena of nature and abstract intellectual concepts are not patentable because, as basic tools of research, no one may claim an exclusive right in them.  But a novel and useful process employing known scientific fact may be patentable.  “This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”

Patents are not granted for the natural properties inherent in things existing in nature, although they may be granted for things an inventor does with those properties.  An old material cannot be patented even though someone has discovered a hitherto unknown use for it, because the material was known.  A new use for old material does not make the material patentable.  But the new use or application of an old material may be patentable.  Similarly, a process or method which involves only a new use of an old material […]

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