Did you know? The Atomic Energy Act of 1954 excludes the patenting of inventions used solely in the utilization of special nuclear material or atomic energy for atomic weapons. Why?

The relatively recent brouhaha around Amazon’s One Click patent raised the question: Should an extremely obvious technology be patented? This, in turn, raises the issue of exactly what can, and cannot, be patented.

In laying out the criteria for an item’s patentability, the patent law has included practically everything which is made by man and the processes for making them. In legal terms, anyone may obtain a patent, subject to the conditions and requirements of the law, if he or she has invented or discovered a “new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof.” According to USPTO guidelines, these terms are defined as follows:

New and Novel – For an invention to get a US patent, it must never have been made public in any way, anywhere in the world, a year before the date on which the patent application was filed. Other countries require absolute novelty with no one-year grace period.

Original and Non-obvious – An invention must involve an inventive step, i.e., the invention must be different enough from similar inventions already out there so that the difference is non-obvious to a person with ordinary skill in the technology area related to the invention.

Useful – The invention must operate to perform its intended purpose.

So what can be patented?

Utility patents can be granted to new, non-obvious and useful:

Processes – a new way to manufacture steel

Machines – something with moving parts or circuitry

Manufactures – articles which are made, such as a tool

Compositions of matter –chemical compositions, mixtures of ingredients and new chemical compounds, such as in a new pharmaceutical

Or any new and useful improvements of the above

Design patents are issued to new and non-obvious ornamental designs of an article of manufacture, for example, the look of an athletic shoe. The design patent protects only the appearance of the article but not its structural or functional features.

In the United States, a design patent is a patent granted on the ornamental design of a functional item. Ornamental designs of jewelry, furniture, beverage containers and computer icons are examples of what can be protected with design patents.

Similar protection of registered design can be obtained in other countries. In Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In Europe, one needs to only pay an official fee and meet other the formal requirements for registration (e.g. Community Design at OHIM, Germany, France, Spain).

For the member states of WIPO, protection is afforded by registration at WIPO and examination by the designated member states in accordance with the Geneva Act of the Hague Agreement).

Some notable design patents include the first design patent, U.S. Patent D1, awarded in 1842 to George Bruce for a new font, as well as U.S. Patent D11,023, awarded in 1879 to Auguste Bartholdi for the Statue of Liberty.

Plant patents protect asexually reproduced new and distinct varieties of plants, including cultivated mutants, hybrids and newly found seedlings other than a tuber-propagated plant or a plant found in an uncultivated state.

What cannot be patented?

Ideas cannot be patented. Patents are issued only to new processes, machines, manufactures, etc. – but not to the ideas or suggestions that inspired them. Non-patentable items include:

·         Mathematical formulas

·         Naturally occurring life forms

·         Laws of nature

·         Physical phenomena (like natural electricity)

·         Abstract ideas

·         Artistic works

·         Processes done entirely with the human body (such as a free throw technique in basketball)

·         Inventions considered not useful or deemed morally offensive

Can genes be patented?

Because they are not inventions, human genes as they exist in the cells of our bodies cannot be patented. However, copies of genes constructed in the laboratory can form part of a patent and this has happened in many instances – with biotech companies, pharmaceutical firms, government institutes and universities worldwide filing patent applications on hundreds of thousands of genes and gene parts. The four basic types of gene patents relate to the proposed use of the DNA sequence: research purposes, genetic tests, gene therapy and therapeutic protein production.

Back to the question on the top of this article, the answer may lie in what this Michigan Law Review article, probably written at the dawn of the atomic age, says about atomic energy patents and domestic law. According to the author, “With the growing importance of atomic energy, conventional legal aspects must be adapted and remodeled to fit new situations. In the area of patent law, the traditional notion that the inventor’s reward should be the legal monopoly in the invention, in the form of a patent, should be reconciled with the need for wide dissemination of technical information.”