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Thursday, 8 January 2009

Able or eligible?

Here's a chance for some of the IPKat's most knowledgeable patent people to come to his aid. In the context of last year's controversial US patent decision in Re Bilski (noted IP Finance and lots of other places too), blog team member Jeremy has been confronted with the terminology "patent eligible".  He thinks he knows what "patentable" means, which leaves him wondering whether patent eligible is

* a long-winded synonym for patentable; 
* a subtly different concept or 
* anything else.
Can any reader please advise?

18 comments:

Martin Hyden said...

I believe that ‘patent eligible’ is just another way of expressing the US concept of statutory subject matter. The MPEP (http://www.uspto.gov/web/offices/pac/mpep/documents/0700_706_03_a.htm#sect706.03a ) uses the term ‘eligibility’.

In the UK and Europe, we include the exclusions in the definition of patenabitlity (novel+inventive step+ industrial application+not otherwise excluded). US law tells us in a positive manner what can be subject matter for patents (35USC101) rather than saying what cannot, then tells us how to decide if it is in fact patentable (novel+ not obvious etc.). Patent eligibility tells us whether or not we pass the first part of this two-part test.

Just my thoughts, for what they are worth.

Gobhicks said...

To my mind, "patentable" means something that satisfies all the criteria for a patent to be granted, including novelty and inventiveness, industrial applicability and non-exclusion.

As used in the US, I believe that "patent eligible" means something that is a "useful process, machine, manufacture, or composition of matter or ... inprovement thereof" per 35 USC 101, patentability being further subject to novelty, non-obviousness etc. It serves to distinguish 101-based issues from 102 (novelty) and 103 (obviousness) issues.

Anonymous said...

If you know the meaning of the word patentable, what is it? I've seen it used both to mean merely not-excluded as well as not excluded, novel, inventive etc. This makes for particular fun if all that matters is whether a judge concluded that it was excluded or not inventive...

In Germany they have two words, Patentfähig and Patentierbar, apparently with different meanings. It is just a shame that they can't seem to agree on what those meanings are or which word goes with which meaning...

Gerontius said...

It's important to remember that "patentable" is an adjective and its meaning changes depending upon the noun.

"Patentable subject matter" is probably synonymous with patent eligible. ie subject matter that is not excluded from or is susceptible to patent protection.

"patentable invention" is more ambiguous but implies that there is no exclusion so that is the where Gobhicks meaning of "satisfying all criteria for a patent" comes in. You might also use the phrase "patentable claim" to have the same meaning.

"Patent eligible" is therefore useful as it avoids the ambiguity inherent in the word "patentable". Personally, I use "patentable" and do so as shorthand for "patentable subject matter".

Gobhicks said...

EPC Art. 52, UKPA77 Art. 1 and 35 USC 101 all consistently use “patentable inventions” to mean inventions that satisfy ALL the criteria for a patent to be granted. It’s common for judges and barristers to use “patentable” to mean, specifically, “not excluded”, which I don’t think is helpful at all. UKIPO decisions re excluded matter are keyworded “excluded fields”, which is much better.

I don't really see why "patentable subject matter" should mean anything different from "patentable invention"; i.e. the subject matter needs to be novel, inventive etc. to be patentable.

Gerontius said...

No, the invention needs to be novel, etc (Art 52(1) EPC). The subject matter (see Art 52(3) EPC) needs to be non-excluded.

Gobhicks said...

I can see your point, but using the word “patentable” to mean distinctly different things in subtly different contexts seems to me to be a bit silly. “Patentable subject matter” needs to satisfy 52(1) AND also to not be excluded by 52(2). “Subject matter excluded from patentability” would be the natural wording to follow from 52(3), and “excluded subject matter” or “patent-excluded subject matter” would seem to be most the appropriate “shorthand”, to avoid confusion given that “patentable” has a wider meaning in its conventional usage.

Thorsten Bausch said...

It may be of interest to you that the German language has two words that may perhaps shed some light on this issue.

“patentierbar” (very often translated as “patentable”, though in my opinion this term rather corresponds to “patent eligible” according to the US doctrine) means whether a patent may be granted on the claimed subject-matter in principle, i.e. that there are no statutory provisions excluding this a priori.

“patentfähig” (again most often translated with patentable) means that the subject-matter of a claim is patent eligible plus that it satisfies the substantive requirements of novelty, inventive step and industrial applicability.

Richard Gallafent said...

I too have seen it, and wondered, more particularly if it was a possible typo, the space in the middle really being meant to have "int" or "unint" in its place, though then one is lacking an "l" later on.....

More seriously, I think there may be a faint whiff of distinction in that eligiblitiy is a concept more often associated with entry into e.g.
a competition or a clinical trial, with no necessary satisfactory outcome in either case. Patentable, on the other hand, seems to me to embrace not merely the concept that an application for a patent could be made, but furthermore that any such application would not merely be successful in terms of leading to grant but that the granted patent would be valid.

So I rate patent eligible as meaning that the subjectmatter is not excluded by the statutory exclusions, rather than reflecting any presence of novely, inventive step and industrial applicability.

But it's all very puzzling. Has someone done a search to see how far back the phrase goes, either in "normal language" or in any judgement on "patentability"?

Derek Freyberg said...

In response to the question raised in your post, "patentable" or "patent eligible", I see the terms as having a different meaning (though I'm not sure whether others do).

Something is "patent eligible" in my mind if it is not excluded from
patentability by a criterion unrelated to novelty, non-obviousness, or the quality of the patent application describing it (written description, best mode) - I'm using here the US terms, but I'm sure you can see the parallels in, say, the EPC. So something is not "patent eligible" if it is, for example, a law of nature or (in most countries) a method of medical treatment.

Again using US terminology, I would say that something is patent
eligible if it is not excluded from patentability by 35 USC 101 [which
is pretty much the issue in Bilski].

On the other hand, something is "patentable" if it is both patent
eligible and also is not excluded from patentability [I know this sounds circular, but at least the construction is parallel with the previous paragraph] by the criteria of lack of novelty (35 USC 102), obviousness (35 USC 103), or failure of quality of the patent application (35 USC 112).

Luke Ueda-Sarson said...

Justine Pila in her paper "Inherent patentability in Anglo-Australian law: A history" has this to say on the very first page:

'“Invention” is used throughout this article to mean subject matter that is inherently patentable in the sense of being eligible for
protection regardless of its actual patentability'.

http://ssrn.com/abstract=574184

In other words, is it an invention within the meaning of the Statute of Monopolies, etc., etc.

So it is not confined to just US parlance.

Cheers, Luke

Roy Marsh said...

So, can we agree that "patent eligible" is the antonym for "excluded subject matter" and "patentable" means something like "that which will meet all the statutory requirements for issue of a patent"? And, Jeremy, how nice to see so many learned contributers using their real names.

Peter McBride said...

I'm not particularly knowledgable but I always understood "patent eligible" subject matter to be equivalent to the UK concept of "statutorily patentable" subject matter, i.e. encompassing stuff not excluded by way of policy as business method, computer program, etc; public policy or morality, or the methods of treatment provisions.

So I guess in the context of decisions it basically means subject matter that would not be excluded as such :-) by 35 USC 101 etc. I don't read it as being equivalent to "patentable" in the sense of having novelty, inventive step and so on.

twr57 said...

Words depend for their meaning on their context (somebody once said). Some are very slippery - 'invention' for example. I think this discussion settles that 'patent eligible' usually refers to technology which is capable of being patented in the absence of prior art. There may be ambiguities: were Arthur Clarke's stationary satellites 'patent eligible' when he didn't know how to get them into orbit? The meaning of 'patentable' varies more according to the intention of the user - Humpty-Dumpty fashion.

Rowena Stent said...

Below is the answer from Neal Feivelson, Of Counsel, in Lovells New York office. Neal has written articles and commented on the Bilski decision. I was particularly keen to answer your question as I had also found the term strange and came across it when editing one of Neal's articles for our international IP Newsletter but had reached the conclusion as below. Now we have a very active US patent practice I come across more strange US terms!

"Patent eligible" is really short-hand for "patent eligible subject matter" and is concerned with whether the subject matter of the application is amenable to patent protection under U.S. law (the subject matter not falling within one of the exclusions, whereas "patentability" is concerned with whether an application has met *all* of the statutory and regulatory requirements to issue as a patent (e.g., new, non-obvious, etc.). Of course "patentable" includes the concept of "patent eligible subject matter." It's probably more precise to use "patent eligible subject matter," which thus becomes one of the aspects of patentability, along with novelty, non-obviousness, utility, etc.

Roy Marsh said...

I suppose that, if EPO-DG3 were to contribute to this thread, its definition of "patent-eligible" subject matter would be "having technical character" and of "patentable" subject matter would be "a clearly defined, new and enabled solution to an objective technical problem".

Graham Cunningham said...

Patent eligible must surely mean whether a product passes through the gateway which might lead it to being patentable in the long run. A computer program per se would not be eligible for consideration for a patent at all, but assuming it is not a program per se but has a demonstrable technical effect, it might or might not be patentable.

How does Merpel sit with that?

Gobhicks said...

For what it’s worth, Wikipedia has an entry for “patentability” (http://en.wikipedia.org/wiki/Patentability), which says:
“Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.”

The article links to another: “Patentable subject matter” (http://en.wikipedia.org/wiki/Patentable_subject_matter), which says:
“Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries suggest that certain subject matter is or is not something for which a patent should be granted.

Together with novelty, inventive step or nonobviousness, utility and industrial applicability, the question of whether a particular subject matter is patentable is one of the fundamental requirements for patentability.”

But the latter article carries a caveat: “The examples and perspective in this article may not represent a worldwide view of the subject.”

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