Patentable Subject Matter

§ 101 of the patent act limits the grant of a patent to patentable subject matter. In the broadest sense of patentable subject matter, anything under the sun made by man is patentable subject matter. However, § 101 excludes from patentable subject matter abstract ideas such as mathematical algorithms unless the claim is presented in a manner that (1) the mathematical algorithm produces “a useful, concrete, and tangible result,” or (2) as employed in a process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., machine, manufacture, or composition of matter.

In the present case, the inventor attempted to patent a method of resolving a legal dispute between two parties by the decision of a human arbitrator. The patent application presented two different sets of claims. The first set did not require the use of a mechanical device such as a computer. The second set required that the access step of the method be established through the internet, intranet, world wide web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communication, or other communication means.

The court held that the first set claims the use of a mental process to resolve a legal dispute. Hence, the first set does not claim patentable subject matter. In contrast, the court held that the second set of claims does not include the mere use of a machine to collect data but combines the use of machines with a mental process, and thus, the second set claims patentable subject matter. In re Comiskey, Fed. Cir., No. 2006-1286, 9/20/07.

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James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

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