Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 63

To be eligible for a patent, an invention must fall within one of the categories of patentable subject matter. Thus, not all inventions are patentable. Normally, the USPTO is somewhat liberal in applying the limitations of the invention categories, providing that an invention is presented for examination in a suitable fashion.

To understand what may be patentable, it is helpful to first discuss items that are not patentable. Unpatentable subject matter includes business forms, perpetual motion machines (because they are not useful under the Constitutional mandate), promotional advertising schemes, intended results of desired goals, functions without any apparatus to perform those functions, nebulous or abstract concepts or ideas, items appearing in nature, and laws of nature. However, the useful and novel application of a law of nature or abstract idea could be subject to patentability. Therefore, while desired functions are not patentable, the product or method that provides that function can be patented, while not the mere result.

In general terms, to be patentable, an invention must be useful, novel, and unobvious. This presumes, of course, that the invention first falls into one of the patentable categories mentioned earlier. “New” and “useful” are requirements that are easy to ascertain and understand. The unobviousness requirement has provided more difficulty over the years, as discussed in Chapter 6.

A process or method patent can be obtained to cover a new use for a known apparatus or composition—for example, a known pharmaceutical or an existing machine. Using a known asthma drug to suppress pre‐term labor contractions would be a new use for a known composition, and would be patentable subject matter as a new method.