Infojustice: The Question Of Patent Eligible Subject Matter And Evergreening Practices

Infojustice writes: “Over the past few years, patent-eligible subject matter has become one of the hotly debated areas of patent law in several countries. Even in the U.S., the Supreme Court is beginning to express concerns about overly inclusive patent rules that stifle both competition and follow-on innovation.  However, significant confusion persists over the difference between patent eligible subject matter and patentability requirements. Patent eligibility tests have proven quite difficult to apply, often leading to inconsistent and unpredictable results.

An inquiry into the patent examination begins with determining whether a claim is eligible for patenting and falls into one or more categories listed under patent eligible subject matter. The term patent eligibility denotes limitations on the categories of subject matter that may be considered for patent protection. This inquiry is different from and always precedes the question of whether the subject matter meets the patentability criteria of novelty, industrial application and inventive step.

In U.S. patent law, patent eligible subject matter is governed by Section 101 (as opposed to Sections 102 and 103, which cover the patentability requirements of novelty, non-obviousness and utility) and, as further defined by the courts, excludes abstract ideas, laws of nature and natural phenomena. However, in some jurisdictions (e.g., India), patent eligible subject matter may exclude certain trivial innovations from the broad category of ‘inventions’.”

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