Requirements of 35 U.S.C. 101

Patents are not granted for all new and useful inventions and discoveries.

For example, the subject matter of the invention or discovery must come within the

boundaries set forth by

35 U.S.C. 101

, which permits a patent to be granted only for “any

new and useful process, machine, manufacture, or composition of matter, or any new and

useful improvement thereof.”

35 U.S.C. 101

Inventions patentable.

Whoever invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and useful improvement thereof, may

obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C.

101

has been interpreted as imposing four requirements, which are

described below.

I.

DOUBLE PATENTING PROHIBITED

35 U.S.C. 101

requires that whoever

invents or discovers an eligible invention may obtain only ONE patent therefor. Thus, it

prevents two patents issuing on the same invention to the same inventor (i.e., the same

inventive entity) or where there is a common (joint) inventor or common

applicant/assignee. The “same invention” means that identical subject matter is being

claimed. This requirement forms the basis for statutory double patenting rejections. If

more than one patent is sought, a patent applicant will receive a statutory double

patenting rejection for claims included in more than one application that are directed

to the same invention.

See

MPEP § 804

for a full discussion of the

prohibition against double patenting. Use form paragraphs

8.30

,

8.31

and

8.32

for

statutory double patenting rejections.

II.

NAMING OF INVENTOR

The inventor(s) must be the applicant in an application

filed before September 16, 2012, (except as otherwise provided in

pre-AIA 37 CFR

1.41(b)

) and the inventor or each joint inventor must be

identified in an application filed on or after September 16, 2012. See

MPEP §

2109

for a detailed discussion of inventorship and

MPEP §

602.01(c)

et seq.

for details regarding correction of inventorship

OR

The inventor(s) must be the applicant in an application

filed before September 16, 2012, (except as otherwise provided in

pre-AIA 37 CFR

1.41(b)

) and the inventor or each joint inventor must be

identified in an application filed on or after September 16, 2012. See

MPEP §

2109

for a detailed discussion of inventorship and

MPEP §

602.01(c)

et seq.

for details regarding correction of inventorship.

In the rare situation where it is clear the application

does not name the correct inventorship and the applicant has not filed a request to

correct inventorship under

37 CFR 1.48

, the examiner should

reject the claims under

35 U.S.C. 101

and

115

for

applications subject to

AIA 35 U.S.C. 102

(see

MPEP §

2157

) or under

pre-AIA 35 U.S.C. 102(f)

for

applications subject to

pre-AIA 35 U.S.C. 102

(see

MPEP §

2137

).

III.

SUBJECT MATTER

ELIGIBILITY

A claimed invention must be eligible for patenting. As

explained in

MPEP §

2106

, there are two criteria for determining subject matter

eligibility: (a) first, a claimed invention must fall within one of the four statutory

categories of invention set forth in

35 U.S.C. 101

, i.e., process,

machine, manufacture, or composition of matter; and (b) second, a claimed invention must

be directed to patent-eligible subject matter and not a judicial exception (unless the

claim as a whole includes additional limitations amounting to significantly more than

the exception). The judicial exceptions are subject matter which courts have found to be

outside of, or exceptions to, the four statutory categories of invention, and are

limited to abstract ideas, laws of nature and natural phenomena (including products of

nature).

Alice Corp. Pty. Ltd. v. CLS Bank Int'l,

573 U.S. 208, 216,

110 USPQ2d 1976, 1980 (2014) (citing

Association for Molecular Pathology v.

Myriad Genetics, Inc.,

569 U.S. 66, 70, 106 USPQ2d 1972, 1979 (2013)). See

also

Bilski v. Kappos,

561 U.S. 593, 601, 95 USPQ2d 1001, 1005-06

ories of invention, and are

limited to abstract ideas, laws of nature and natural phenomena (including products of

nature).

Alice Corp. Pty. Ltd. v. CLS Bank Int'l,

573 U.S. 208, 216,

110 USPQ2d 1976, 1980 (2014) (citing

Association for Molecular Pathology v.

Myriad Genetics, Inc.,

569 U.S. 66, 70, 106 USPQ2d 1972, 1979 (2013)). See

also

Bilski v. Kappos,

561 U.S. 593, 601, 95 USPQ2d 1001, 1005-06

(2010) (citing

Diamond v. Chakrabarty,

447 U.S. 303, 309, 206 USPQ

193, 197 (1980)).

See

MPEP § 2106

for a discussion of subject

matter eligibility in general, and the analytical framework that is to be used during

examination for evaluating whether a claim is drawn to patent-eligible subject matter,

MPEP §

2106.03

for a discussion of the statutory categories of

invention,

MPEP § 2106.04

for a discussion of the judicial exceptions,

and

MPEP §

2106.05

for a discussion of how to evaluate claims directed to

a judicial exception for eligibility. See

MPEP §

2106.07(a)(1)

for form paragraphs for use in rejections under

35 U.S.C.

101

based on a lack of subject matter eligibility. See also

MPEP §

2105

for more information about claiming living subject

matter, as well as the Leahy-Smith America Invents Act (AIA)'s prohibition against

claiming human organisms.

Eligible subject matter is further limited by the Atomic

Energy Act explained in

MPEP § 2104.01

, which prohibits patents

granted on any invention or discovery that is useful solely in the utilization of

special nuclear material or atomic energy in an atomic weapon.

IV.

UTILITY

A claimed invention must be useful or have a utility that

is specific, substantial and credible.

A rejection on the ground of lack of utility is appropriate when (1) it

is not apparent why the invention is “useful” because applicant has failed to identify

any specific and substantial utility and there is no well established utility, or (2) an

assertion of specific and substantial utility for the invention is not credible

be useful or have a utility that

is specific, substantial and credible.

A rejection on the ground of lack of utility is appropriate when (1) it

is not apparent why the invention is “useful” because applicant has failed to identify

any specific and substantial utility and there is no well established utility, or (2) an

assertion of specific and substantial utility for the invention is not credible. Such a

rejection can include the more specific grounds of inoperativeness, such as inventions

involving perpetual motion. A rejection under

35 U.S.C. 101

for lack of utility

should

not

be based on grounds that the invention is frivolous,

fraudulent or against public policy. See

Juicy Whip Inc. v. Orange Bang

Inc.,

185 F.3d 1364, 1367-68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999)

(“[Y]ears ago courts invalidated patents on gambling devices on the ground that they

were immoral…, but that is no longer the law…Congress never intended that the patent

laws should displace the police powers of the States, meaning by that term those powers

by which the health, good order, peace and general welfare of the community are

promoted…we find no basis in section 101 to hold that inventions can be ruled

unpatentable for lack of utility simply because they have the capacity to fool some

members of the public.”).

The statutory basis for this rejection is

35 U.S.C.

101

. See

MPEP § 2107

for guidelines governing

rejections for lack of utility. See

MPEP §§ 2107.01

-

2107.03

for legal

precedent governing the utility requirement. See

MPEP § 2107.02

, subsection IV, for form

paragraphs to be used to reject claims under

35 U.S.C. 101

for failure to satisfy

the utility requirement.