Patentable Inventions: AIA’s Limitations

A patent may be issued in the United States only for certain inventions. Section 101 of the Patent Code sets the statutory boundary on eligible subject matter, and provides:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”[1]

Notwithstanding, there is a “clear congressional mandate that a very broad swath of inventions be eligible for patent protection.”[2] The limitations on what subject matter may be patentable, however, are not always clear.

To illustrate, the Federal Circuit Court of Appeals again explained, in its recent DealerTrack v. Huber opinion, that an invention is not patent eligible where its claims are “directed to an abstract idea preemptive of a fundamental concept of idea that would foreclose innovation in [an] area”—confirming that the claims at issue, relating to a processing information through a clearinghouse, were invalid under section 101. But, while this limitation may itself be abstract, the America Invent Act (AIA)[3] sets forth at least two clear limitations to section 101. Both of these limitations are, strictly speaking, not amendments to section 101; rather they are found outside of section 101.

First, section 14 of the AIA prohibits the issuance of a patent on tax strategies. Section 14(a) provides:

“For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.”

Stated as another source of prior art, this language operates to exclude these strategies from patentable subject matter. Section 14(d) proceeds by clarifying that “Nothing in this section shall be construed to imply that other business methods are patentable or that other business method patents are valid.”

Next, section 33 of the AIA prohibits patents on human organisms, and provides:

“Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.”

Undoubtedly, we will see arguments about how to interpret the limitation human organism or strategy.

Posted on February 14, 2012, in Legislation, Patent and tagged . Bookmark the permalink. Comments Off on Patentable Inventions: AIA’s Limitations.

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