Part 2 - Short Guide to Patent Protection and Patentability

Part 2 - Short Guide to Patent Protection and Patentability

What can be protected?

Determining what qualifies as a patentable invention is a highly difficult and complicated task. The MPEP states that “Anything under the sun that was invented by man qualifies as patentable”. Simple enough, but if you notice, following this statement is hundreds of pages full of exceptions and details on the idea of patentability. Scores of appeals and patent court cases have arisen due to questions regarding patentability because it still hasn’t, and probably never will be, entirely pinned down.

So, defining what is patentable is not as clear cut as black and white. Inventions can encompass a wide variety of areas, even living subject matter so long as the subject matter is the result of human intervention. An example of a patentable living organism is a microorganism or a plant which is produced or altered through genetic engineering. The key is that the living matter must be a product of “human ingenuity” and not merely a naturally occurring object, such as a shrimp with its digestive tract removed. The living matter must be altered to yield unique properties for it to be patentable.

However, the alteration can even be the mere fact that the living matter is simply isolated or purified. For example, unaltered pieces of DNA may be patentable provided they have been sequenced. The PTO has decided that the act of isolating and sequencing a strand of DNA is the result of human intervention. Currently, there is huge debate surrounding the patenting of biotechnology related “inventions” like DNA. Is a piece of DNA really an invention at all? Or what about a microorganism that happens to degrade oil? Is that an invention? Who knows? We can only hope that maybe someday the PTO will have it all sorted out.

The PTO has established that laws or forces of nature are not deemed patentable. Examples of these include, but are not limited to, the law of gravity or E=mc2. At least the PTO has gotten that far. Computer related inventions may or may not be patentable. Computer programs that have a function when used with a computer are definitely patentable subject matter. Merely recording information (like music, literary works or data) on a computer-readable medium will not result in a patentable idea.