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What are the criteria for patentability in your jurisdiction?

By statute, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be patented. There are also certain requirements for patent eligibility imposed by governing case law; patents cannot be obtained on abstract ideas, laws of nature or natural phenomena. These requirements are discussed in more detail below. 

Newness The requirement of newness, or novelty, means that the subject matter sought to be patented must be different from anything that is described or embodied in any single item of what is known as ‘prior art’ – legally defined categories of knowledge, activities or physical things that existed before the effective date of the patent in question. Most commonly, prior art consists of earlier patents and printed publications but, under US law, prior art can also include prior knowledge or activities of the inventor and third parties. Each discrete item of prior art is usually referred to as a prior art reference.

Usefulness The requirement of usefulness, or utility, is usually easy to meet under US law. Generally, this requirement is satisfied if the invention described in a patent application has a disclosed use that is both substantial and specific. In this context, ‘substantial’ utility means that the claimed invention has a significant and available benefit to the public. ‘Specific’ utility means that the patent application discloses a use that is not so vague as to be meaningless.

Non-obviousness In addition to being new and useful, the subject matter of a patent must be non-obvious. This requirement is similar – but not identical – to that of the ‘inventive step’ in the laws of other countries. Non-obviousness is determined by comparing the invention as a whole with the prior art to evaluate whether the subject matter would have been obvious to a “person of ordinary skill in the art” (ie, someone familiar with the technological field of the invention). Obviousness differs from lack of novelty because more than one prior art reference may be considered. However, in order to find that the subject matter would have been obvious, it is not enough that each element of the invention sought to be patented can be found individually in the prior art. Instead, US law recognises that almost all inventions are – at some level – combinations of elements found in the prior art; therefore, in order to find obviousness, the prior art must fairly provide a reason or motivation to combine elements from different prior art references. 

What are the limits on patentability?

The most significant limits on patentability under US law pertain to the fact that patents cannot be obtained on abstract ideas, laws of nature or natural phenomena. This body of law was articulated by the US Supreme Court and has been the subject of significant attention from the US legal system in the past several years. The prohibition on patenting abstract ideas has been applied extensively to patents and patent applications on software and business methods. Generally, subject matter that is directed primarily to an algorithm will be considered an abstract idea and will therefore fail to qualify for patent protection. Similarly, subject matter that consists primarily of a computer-implemented business process which was previously carried out manually will be considered an abstract idea. The prohibition on patenting laws of nature and natural phenomena has been applied to strike down patents in the life sciences field, most notably on isolated but otherwise naturally occurring DNA.  

Are there restrictions on any other kinds of invention?

Inventions that could be significant to US national security are subject to special procedures and may be ordered to be kept secret. In practice, this procedure is applied to an extremely small proportion of patent applications.    

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