Under U.S. patent law, four general categories of inventions are eligible for patent protection: processes, machines, manufactures, and compositions of matter, as well as improvements to any of these. However, not all inventions within these categories automatically qualify; they must meet specific eligibility tests, especially for processes.
Case Study: In re Ferguson
In In re Ferguson, 2007-1232 (Fed. Cir. 2009), the court addressed whether a process invention qualified as patentable subject matter. The applicants had submitted a claim for a method of marketing a product. To determine eligibility, the court applied the machine-or-transformation test, which requires that a process:
- Be tied to a particular machine or apparatus, or
- Transform an article into a different state or thing.
The applicants’ claim contained the phrase “marketing force”, which they argued met the machine requirement. However, according to In re Nuijten (Fed. Cir. 2007), a machine must be a concrete object made up of parts or devices. The court found that “marketing force” did not meet this definition of a machine, nor did the claimed method involve a transformation. Consequently, the court ruled that the method claim was ineligible for patent protection.
The applicants also submitted a claim directed to a “paradigm” for marketing software, which they argued fit within the statutory categories. They claimed that the term “company” used in the paradigm was a machine. The court disagreed, holding that a “company” does not qualify as a machine, especially given the applicants’ own admission that a company is intangible. As a result, the paradigm claim was also ruled ineligible for patent protection.
Key Takeaway
Not all process inventions qualify for patent protection. Under the machine-or-transformation test, a process must be tied to a concrete machine or apparatus, or must transform an article into a different state. This case illustrates the importance of carefully aligning process claims with statutory requirements to ensure eligibility.
For assistance in drafting patent claims that meet eligibility requirements, feel free to reach out at (949) 433-0900. As an experienced patent attorney serving Orange County, Irvine, Los Angeles, San Diego, and surrounding areas, I’m here to help you navigate complex patent eligibility issues and secure meaningful patent protection.