What Is A Patentable Invention Anyway

Introduction

Once granted and in force, a patent can serve as a strong deterrent to competitors from commercially benefiting from the patented product or process. An unauthorised party performing acts in relation to a product/process that falls within the scope of protection infringes the patent. Our previous article discusses the scope of protection as being defined by claims which may be drafted broadly. However, not everything that a patentee hopes to claim will be allowed. In particular, the subject matter of a patent must be an invention within the meaning of the law.

No invention no patent

Only inventions can be patented. However, most patent systems do not define what counts as an invention, but rather what is not an invention or more specifically a patentable invention. This is perhaps rightly so given the myriad forms in which an invention may assume. The following are often not considered eligible subject matter:

discoveries
scientific theories and mathematical methods
aesthetic creations
schemes, rules or methods for performing a mental act, playing a game or doing business
presentation of information

Before drafting a patent specification which contains potentially ineligible subject matter, it is critical that a determination be made regarding the subject matter of the invention to avoid wasting time and effort on a patenting journey that should not have started in the first place!

It should be of note that an invention relating to any one of the above does not necessarily lead to automatic disqualification as a patentable invention. If the invention does not wholly concern non-eligible subject matter but involves application of non-eligible subject matter in a manner that yields a technical advantage, it may still be patentable. Hence, there is a need to determine subject matter eligibility early in the patenting process.

This determination involves identifying the actual contribution of the invention by discerning not only the problem purported to have been solved, but also the manner the problem is said to have been solved and the advantages of the solution from a technical perspective. It is often helpful to consider the technical perspective from the point of view of an engineer, in other words, whether an engineer appreciates the problem and its solution. Perhaps some examples will better illustrate this.

Let’s suppose that someone identifies an anti-gravity wave that cancels/reduces the effects of gravity. The anti-gravity wave would likely count as a discovery. Accordingly, any attempt to patent the anti-gravity wave per se without any technical features would not be permissible. However, a method or device that produces the anti-gravity wave may be eligible subject matter.

Likewise, an algorithm that accelerates machine learning model convergence with broad applicability in a wide range of applications would be excluded from patentability as a mathematical method. In contrast, a system which performs some of the algorithm’s processes in relation to a specific application may count as an invention if the claimed subject matter is identifiable as a solution to a technical problem with discernible advantages.

Disallowing overly broad patents which encompass a wide range of applications makes sense since this could lead to a stifling of innovation rather than encouraging it as per the original intent of patent systems. Everything with mass including all human beings may well be infringing such a patent simply by existing.

The importance of identifying a discernible solution to a technical problem is particularly relevant in non-engineering related inventions which, at first glance do not appear to be technical in nature. Such is the case for inventions at least relating in part to business methods. As discussed earlier, a claim solely directed at unpatentable subject matter such as business methods could be rejected outright. If technical elements such as a computerised network system are also present, it may be regarded as patentable. However, it should be cautioned that simply “digitalising” a business method in a computerised system is unlikely to be sufficient. The business method must interact with the computerised system in a material way that leads to a solution to a technical problem.

For example, mere implementation of an accounting task (e.g. drawing up a balance sheet) in a computer system would probably remain an accounting problem and not a technical one. The person who would best appreciate the problem/solution would be an accountant and not a computer engineer. In contrast implementing a computerised system to facilitate the secure handling of the accounting task via the interoperation of various software and hardware elements that would be appreciated by a network engineer may be acceptable.

Different countries different rules

While there is some degree of commonality across jurisdictions as to what is excluded subject matter, differences do exist. For example, in the United States, subject matter relating to nature-based products is ineligible for patent protection if the product as claimed does not exhibit significantly different characteristic from its naturally occurring counterpart. There are no equivalent subject matter exclusions in Singapore.

Conclusion

In conclusion, only inventions can be patented. Certain subject matter may be specifically excluded from patentability. Even if an invention does not relate to any excluded subject matter, there are other requirements to fulfil. Our next article will discuss these requirements, namely, that of novelty, inventive step and industrial applicability. See you then!