When it comes to innovation, the sky is the limit. Yet, when it comes to patenting those innovations, boundaries indeed exist. These boundaries help maintain a balance in our society, preserving a fair and just system that fosters creativity while ensuring public access to essential knowledge and technology. This article explores the key limitations of what can be patented.

Understanding What Can Be Patented

Before delving into the limitations, we should first clarify what qualifies for a patent. Patents are legal protections granted to inventors, offering exclusive rights to their invention for a specific period, usually 20 years. These rights essentially resemble a legal monopoly on your invention enforced by the federal government. The invention must be novel, non-obvious, and useful. Detailed information about the invention, including how to use and produce it, should be disclosed in the patent application.

Legal Limitations on Patentability

There are various legal limitations on what can be patented in the U.S. In general, the following are not patentable under 35 U.S.C. Section 101:

Research Tools

You can’t patent a law of nature or a physical phenomenon. These elements form the essential tools of scientific and technological work. For instance, mathematical formulae, such as E=mc2, describe natural phenomena and cannot be patented.

Natural Phenomena

Discovering naturally occurring organisms or substances, like finding a gene or a DNA sequence, also can’t be patented. These cannot be patented for a different reason. They are not ‘invented’ by a person but simply ‘found’.

Abstract Ideas

There is another category of invention that cannot be patented for logical reasons. These are abstract ideas. Take, for example, the first person to discover how to calculate an average. This average can be claimed as a method claim, such as:

  1. determine how many numbers you would like to average, ‘N’;
  2. add the n numbers to create a sum;
  3. divide the sum by ‘N’ to result in your average.

To infringe a process claim, one must have proof that the infringer has executed the steps of the process.

If an alleged infringer executes the steps above mentally, technically, he/she is an infringer. The problem is that this infringement cannot be proven in Court since no physical evidence exists. Therefore, this claim cannot be enforced. Logically, it makes no sense to go through several years of prosecution to result in a claim that cannot be enforced, making the patent unenforceable and worthless.

Inventions Contrary to Public Morality

Inventions must adhere to social ethics. An invention that could potentially harm human, animal health, or the environment, is not patentable. The interpretation of this criterion varies across countries and can be subjective.

Methods of Medical Treatment

The U.S. does not allow methods claims for the treatment of a human or animal body by surgery, therapy, or diagnostic methods to be patented. However, new and inventive medical devices, pharmaceuticals, or procedures can be patented.

The rationale is that it is against public policy to restrict a person from receiving life-saving surgical procedures because a single entity owns a patent on the procedure.

Practical Limitations on Patentability

Besides the legal restrictions, practical limitations also influence what can be patented. Here are a few significant factors:

Technological Feasibility

The invention needs to be functional, reliable, and reproducible. For instance, you can’t patent a design for a perpetual motion machine, as it defies the laws of physics.

Disclosure Requirements

Patent applications must meet the ‘Enabling Requirement’ of 35 U.S.C. Section 112. The Applicant must provide enough detail for ‘… a person of ordinary skill in the art, to make and use the invention’. If the inventor cannot or does not want to disclose the complete workings of the invention, a patent may not meet the 35 U.S.C. Section 112 Enabling Requirement.

Navigating the Boundaries

Understanding these limitations can help inventors and entrepreneurs navigate the patent system more effectively. It’s important to conduct a comprehensive patent search and possibly consult with a patent attorney before proceeding with a patent application. These steps can help ensure that the invention falls within the boundaries of what can be patented and increase the chances of obtaining a patent.

Encouraging Innovation Within the Boundaries

While limitations exist, they should not be seen as obstacles but as guidelines to channel creativity and innovation in the right direction. They help maintain a balance in the innovation ecosystem, encouraging inventors to focus on producing novel and useful inventions.

Understanding the scope and limitations of patents is essential for anyone engaged in innovative work. So, keep innovating within these boundaries, and remember: these constraints don’t limit the power of an innovative mind; they guide it.

Contact Zale Law for help with your patent needs.

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