General Subject Matter
Subject matter that is eligible for patent protection comprises any new and useful process, machine, manufacture, or composition of matter (or any improvement thereof). Less formally, we say that a patent may be directed toward a process or a product.
There are three categories of subject matter that are not eligible for a patent:
(1) physical phenomena;
(2) laws of nature; and
(3) abstract ideas.
Laws of Nature
If a substance is found in nature, it may not be patented. In Association for Molecular Pathology v. Myriad Genetics, the Supreme Court held that naturally-occurring genetic code in DNA cannot be patented because it represents a naturally occurring substance. In Diamond v. Chakrabarty, the Court held that a living organism that is not found in nature may be patented as a product of human ingenuity.
Any scientific explanation for a physical phenomenon may not be patented. The Supreme Court ruled in Mayo Collaborative v. Prometheus Laboratories, Inc. that a relationship between drug dosages and substances in the body constitutes a law of nature. A test that is based on that relationship is no more eligible than the relationship itself.
Process claims are suspect when they fail the machine-or-transformation test (i.e., when they are not tied to a machine or fail to transform an article to a different state or thing). Two subject areas raise concern: (1) computer software (Alice Corp. v. CLS Bank Int’l) and (2) business methods (Bilski v. Kappos).
Justin Case is an explorer of the African jungles. On one venture into the deep jungle, he discovers a small bird that the scientific community had never previously identified. Justin names it the CaseBird. The CaseBird has super strength, able to lift 10,000 times its own body weight. Justin lets his friend, Dr. Moneyman, examine the bird. Dr. Moneyman extracts a fluid from the CaseBird that apparently gives it its super strength. Dr. Moneyman discovers that humans will have the same super strength if they ingest the fluid.
Both Justin and Dr. Moneyman apply for patents. Justin claims the newly discovered bird. Dr. Moneyman claims the fluid that he isolated from the CaseBird and he claims the process for making humans stronger (through ingesting the CaseBird’s fluid).
Questions: Are the claims of Justin Case and Dr. Moneyman eligible for patent protection?
Martin Meddler starts a bill-collection business. He employs novel techniques for making people pay their bills, including loudly (and out of tune) singing to the debtors whenever they are in public, cheering their name at high pitches and loud volume levels (especially when they are in a public restroom), and yelling the amounts that they owe at the top of his voice whenever they are in a public setting. The means that Martin employs to collect bills are both novel and effective. Martin seeks a patent on his method of bill collecting.
Question: Is this a permissible subject matter?
Bonnie Beater has created a computer program that recommends a monthly amount that a person should save for retirement based on his income and regular monthly expenses.
Question: Is the subject matter of Bonnie’s program patent eligible?
Candace creates a micro-organism. The micro-organism has a naturally-occurring enzyme that diffuses fat deposits (plaque) that stick to the walls of arties. Hence, if the micro-organism is placed in a person’s bloodstream, the micro-organism strips arteries of harmful plaque deposits. A few days after it is placed in the body, the micro-organism makes its way out of the body.
In a patent application, Candace claims the micro-organism and the reaction between the micro-organism’s enzyme and plaque.
Question: Do Candace’s claims constitute subject matter that is eligible for patent protection?
Answer to Question 1
None of the claims of Justin or Dr. Moneyman are eligible for patent protection. Justin’s claim is to a naturally occurring phenomenon—a bird that he found in nature. His claim is patent ineligible as a physical phenomenon.
Dr. Moneyman’s claims also constitute subject matter that are ineligible for protection. His first claim to the fluid is directed toward a substance that occurs naturally in nature. The fact that he isolated it by extracting it from the CaseBird does not matter. His second claim is no better. The discovery that the human body will become stronger by ingesting the fluid constitutes a law of nature. Dr. Moneyman’s process of applying that law—ingesting—is well known. Hence, his second claim is merely an attempt to patent a law of nature.
Answer to Question 2
Perhaps. Martin seeks a patent on his business method. Business methods may be patented, insofar as they do not constitute an abstract idea. On the one hand, Martin’s method is not tied to a machine and it does not transform an article to a different state or thing. On the other hand, Martin’s means of collecting bills does appear to contain an inventive concept because it is a novel and effective means of accomplishing the task.
Answer to Question 3
No. Bonnie’s program amounts to applying a well-known process of budgeting to a computer. There is no inventive concept. The program would constitute an abstract idea. (It would also fail for reasons of obviousness, discussed in Chapter 6.)
Answer to Question 4
Candace’s first claim for the micro-organism is patent eligible. Assuming that the micro-organism is not found in nature, the fact that it is alive does not preclude its eligibility for a patent. It reflects human ingenuity; it is eligible.
Candace’s second claim for the reaction between the micro-organism’s enzyme and plaque is not patent eligible. That claim represents a law of nature.