United States: Is This Patentable?

One of the questions most often asked of patent attorneys is: "Is this patentable?" Such a question may apply to the questioner's own invention or to the purported invention of another.           

While it may appear to be a simple question, there are actually a few different ways to interpret and answer the question: "Is this patentable?"

I.  "Does this meet all the requirements of a patent?"

This interpretation of the question asks whether an invention meets all the requirements so as to merit a patent grant. This question may be asked when an inventor or company is exploring options for protecting a new invention against copying and misappropriation by competitors or other parties.

In summary, the requirements for obtaining a patent include subject matter eligibility, novelty, obviousness, and written description. In addition, new federal statutes* have switched the U.S. patent system from a "first to invent" system to a "first to file" system, making timing a crucial consideration.

Answering this question is a process during which patent applicants may negotiate with examiners in the U.S. Patent & Trademark Office to identify and define an invention that meets the foregoing requirements. The standard track for examination may take several years, while accelerated examination may conclude within a year or so.

* The Leahy-Smith America Invents Act (AIA), which was passed in 2011 and whose central provisions went into effect in 2013, represents the most significant change to the U.S. patent system in over fifty years. In addition to the "first to file" rule change, the AIA also added new options for accelerating patent examination and for challenging patent validity at the United States Patent & Trademark Office.

II. "Is this the type of thing that is eligible to patent?"

This interpretation is directed to whether an invention is even eligible for a patent. Patent attorneys and judges may refer to this as "patentable subject matter" or more precisely as "patent-eligible subject matter." Such a question may be asked of new technologies that do not neatly fall into traditional and generally accepted notions of invention.

The statute that governs "patent-eligible subject matter" at least for utility patents is 35 U.S.C. § 101. How that statute is to be interpreted, however, remains in flux. The infographic below illustrates the general categories that are eligible for patents and categories that have been judicially carved out as being ineligible for patents, as well as examples for each.

Controversy may arise, however, when an invention appears to incorporate one of the categories of ineligible subject matter. Such disputes have encompassed, for example, cases regarding whether certain gene patents incorporate laws of nature and whether certain software-related patents incorporate abstract ideas. The United States Supreme Court addressed the former recently, finding that certain patents on isolated genes for breast cancer fell squarely within the law of nature exception. Ass'n for Molecular Pathology v. Myriad Genetics, Inc. (June 13, 2013). The latter issue, however, has been extensively litigated in recent years with no clear answer.

The United States Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over patent appeals cases, has been deeply divided on the subject. In the past six months alone, the Federal Circuit issued the following decisions pertaining to the patent-eligibility of software:

         Accenture Global Services, GMBH v. Guidewire Software, Inc (September 5, 2013) held that "simply implementing an abstract concept on a computer, without meaningful limitation" does not confer patent-eligibility to a computing system that includes such components as server, client, database, and processor.  The Federal Circuit has been asked to rehear the case with the full en banc court.

         Ultramercial v Hulu (June 21, 2013) held that a computerized method for distributing advertising in conjunction with copyrighted content over the Internet was indeed patent-eligible, because a claim tied to a "specific computer" in a "specific way" and reciting "specific steps with many limitations" was more than a "mere reference." A petition for certiorari was filed with the U.S. Supreme Court on August 23, 2013.

         CLS Bank Int'l v. Alice Corp. Pty. Ltd (May 10, 2013) was heard en banc by ten judges and resulted in seven different opinions. Because no more than five judges signed onto any one opinion, there was no clear majority. As such, the judgment of the district court—which had invalidated claims directed to a method, system, and computer-readable medium—was allowed to stand. A petition for certiorari was filed with the U.S. Supreme Court on September 4, 2013.

In addition to the petitions for certiorari currently pending before the U.S. Supreme Court regarding software-related patents, the U.S. Government Accountability Office issued a report on August 22, 2013 stating that "software-related patents often had overly broad or unclear claims or both." While such a problem is not exclusive to software, what that means is that many patents asserted by "patent trolls" (also called "non-practicing entities" or "patent assertion entities") tend to be software-related patents. Many ongoing patent reform efforts are particularly concerned with the litigation by such parties. As such, the law governing patent-eligibility—particularly around software-related patents—will surely continue to evolve.

In the meantime, the USPTO currently provides various options—with additional proposals making its way through Congress—to challenge the patentability of already-granted patents by showing that such patents seek to claim ineligible subject matter or otherwise fail to satisfy all patents requirements as described above.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.