You can patent an abstract idea if you can show it arose in your mind, but what exactly is an abstract idea? The definition of abstract ideas is something that is unique, imaginative, and has not yet become practical or been fully reduced to practice. Abstract ideas can face a very real threat in the form of direct competition if you are trying to patent it. Policymakers might disagree with this, but the reality is that there’s not always a physical product on which you can put a patent sticker.
There are a number of distinctions between physical phenomena and laws of nature, which are the two categories of “abstract ideas” covered by the patent laws. But can you patent a mathematical formula? In some cases, the answer is a resounding “yes,” but there are exceptions, which we’ll discuss below.
- Categories of abstract ideas
- Laws of nature
- What is a law of nature
- is a law of nature patentable?
- Physical phenomena
- Laws of nature
- Patenting abstract ideas
- Patenting laws of nature
- Patenting physical phenomena
categories of abstract ideas
Laws of nature
What is law of nature?
A law of nature is an independent, objective and natural truth. It is a principle or rule that describes or explains a phenomenon in the physical or social world. A law of nature can be expressed as a general proposition, usually in mathematical terms.
Is a law of nature patentable?
The US Patent Office has defined laws of nature as abstract ideas, which are not patentable:
- A mere discovery of a new property or relationship does not constitute invention. For example, Einstein’s celebrated theory relating to the photoelectric effect was merely a discovery that certain substances emit electrons when exposed to light; it did not purport to improve upon any known method of producing such electrons. See: In re Einstein, 40 C.C.P., Patents 1264, 1269 (Comm’r Patent Oflice 1945).
In this article, we’ll discuss how patent eligibility is determined and the problems inherent in defining “natural” terms. The article will discuss how the Supreme Court has struggled to assign legal meaning to “natural” terms, and how this may lead to misunderstandings about patent eligibility. Using these terms as a guideline to assess patent eligibility is helpful, but it’s not without challenges. We’ll also discuss the implications of judicial decisions, including those that rely on a broader understanding of natural complexity.
Physical phenomena include things like mathematical algorithms, natural processes, and new compositions of matter. The USPTO doesn’t allow patents on these types of inventions because they don’t have any practical application outside of their basic description in a patent application (or on their own).
Patenting Abstract ideas
The U.S. Patent and Trademark Office (USPTO) accepts patents on abstract ideas under certain circumstances. Depending on the type of abstract idea, a patent may be granted for the method of carrying out the abstract idea, or for a machine or device that carries out the abstract idea.
The USPTO has always accepted patents for inventions even if they are not implemented in hardware and software, but simply described in terms of their function or use. As long as the inventor can explain how his invention works in enough detail so that others can replicate it, he may obtain a patent on that invention.
For example, suppose an inventor invents a new type of camera lens cap which features an opening at its center through which one can look without removing it from one’s camera. The inventor claims this invention by writing down how it works and describing how to build it using only words and drawings without any details about materials used or physical dimensions required to make the cap work properly (e.g., length or diameter).
In this case, there is no way for others to know what kind of material is needed for this cap because there are no specifications listed in the description that explain how wide or thick it must be made in order to use it.
There are several categories of abstract ideas that are not patentable. These include:
- Mathematical algorithms and laws of nature
- Methods of doing business (such as a method for shopping on the Internet)
- Physical phenomena (such as the law that water boils at 100°C at sea level)
- Aesthetic creations (such as a painting or sculpture)
Abstract ideas can be expressed in many forms, such as a mathematical formula, an algorithm, a business method or even a work of art. The form doesn’t matter; it’s the underlying idea that matters. For example, the idea of “buying products online” may be expressed in code as an algorithm or in writing as a business method or even in words as an abstract idea.
Patenting laws of nature
A law of nature is an abstract idea, and so is not patentable.
However, a process that employs a law of nature is not necessarily unpatentable. For example, the isolation of a chemical compound from its natural source can be patented as a separate process. The Supreme Court has held that “the law of nature exception to patentability applies only to claims that are directed to such phenomena, laws or principles themselves.” Diamond v. Diehr (1981).
In addition, the use of a law of nature for purposes other than to avoid infringement can also be patented. For example, if you invent a new way to improve upon existing technology that uses a physical principle or mathematical formula (i.e., “abstract idea”) then it would likely be considered non-obvious and eligible for patent protection.
Case studies to demonstrate patentability of laws of nature
First, patents require a creator. Often, the word “discoverer” implies the first person to find a new thing or use it. This means that Einstein couldn’t receive a patent for the equation E=MC2. But courts have consistently ruled that patents cannot be granted based on the laws of nature. As such, any new invention must conform to these laws. By limiting patents to natural phenomena, patentable ideas are often rejected.
While the Supreme Court has not definitively defined what constitutes an abstract idea, the majority of cases have found that natural phenomena and laws of nature are not patentable. Patent eligibility for natural products, however, does not depend on their scientific or technological characteristics, so patenting an abstract idea may be the best option for an inventive product. But patent eligibility for “laws of nature” and “abstract idea” can be difficult, so the Supreme Court has provided a broader definition.
This reasoning reflects the Court’s concerns about the patent system. The Court’s ruling in Mayo v. Myriad explains how the courts have consistently rejected patents that rely on laws of nature. The patent claims in Mayo start with a law of nature, but then direct doctors to collect data and draw inferences. Neither of these steps adds any novel steps to the invention.
The Supreme Court has repeatedly cited the “law of nature” as a test to assess patent eligibility. But the courts’ use of the term depends on the scientific framework used in interpreting patent eligibility. Similarly, in Alice v. Mayo, the Supreme Court found that Newton had not been able to patent the law of gravity, because Einstein’s theory makes it impossible for Newton to claim a patent based on the principle.
Although the reasoning in Benson does not appear to be entirely consistent with the Federal Circuit’s ruling in Natural Alternatives, it is consistent with the Mayo and Bilski cases. In other words, the mental steps doctrine is consistent with the rejection of laws of nature and abstract ideas. Ultimately, the Federal Circuit, the court in Natural Alternatives, and the Supreme Court have recently begun to relax the restrictions on patents. While it’s too early to make any conclusive judgment, the decision could signal a fading tide in “abstract ideas” cases.
Patenting physical phenomena
The USPTO considers a “physical phenomenon” to be an abstract idea, and thus unpatentable. The USPTO has adopted this position since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). A physical phenomenon is defined as an “abstract idea” or “natural phenomenon” that is “not patent eligible.”
The USPTO does not have a formal definition for what qualifies as a physical phenomenon but it does have guidelines for determining if a claimed invention is directed to such an idea:
1) The claim must not recite any specific technological application of the principle beyond that which is conventional or routine in nature;
2) The claim must not provide any indication of how the invention will operate; and
3) The claim must not provide any indication of how the invention will be used in any practical application.