Intellectual Property FAQs - Law Office Fergus, A Law Office Attorneys San Francisco, California

What types of inventions can be patented?

The U.S. Patent and Trademark Office (USPTO) issues three different kinds of patents: utility patents, design patents, and plant patents.

To qualify for a utility patent -- by far the most common type of patent -- an invention must be:

a process or method for producing a useful, concrete, and tangible result (such as a genetic engineering procedure, an investment strategy, computer software, or a process for conducting e-commerce on the Internet)
a machine (usually something with moving parts or circuitry, such as a cigarette lighter, a sewage treatment system, a laser, or a photocopier)
an article of manufacture (such as an eraser, a tire, a transistor, or a hand tool)
a composition of matter (such as a chemical composition, a drug, a soap, or a genetically altered lifeform), or
an improvement of an invention that fits within one of the first four categories.

If an invention fits into one of the categories described above, it is known as "statutory subject matter" and has passed the first test in qualifying for a patent. But an inventor's creation must overcome several additional hurdles before the USPTO will issue a patent. The invention must also:

have some usefulness (utility), no matter how trivial
be novel (that is, it must be different from all previous inventions in some important way)
be nonobvious (a surprising and significant development) to somebody who understands the technical field of the invention.

For design patents, the law requires that the design be novel, nonobvious, and nonfunctional. For example, a new shape for a car fender, a bottle, or a flashlight that doesn't improve its functionality would qualify.

Finally, plants may qualify for a patent if they are both novel and nonobvious. Plant patents are issued less frequently than any other type of patent.

Examples of Patentable Subject Matter

The following items are just some of the things that might qualify for patent protection:

biological inventions	business methods
carpet designs	chemical formulas or processes
clothing accessories and designs	computer hardware and peripherals
computer software	containers
cosmetics	decorative hardware
e-commerce techniques	electrical inventions
electronic circuits	fabrics and fabric designs
food inventions	furniture design
games (board, box, and instructions)	housewares
Internet innovations	jewelry
laser light shows	machines
magic tricks or techniques	mechanical inventions
medical accessories and devices	medicines
musical instruments	odors
plants	recreational gear
sporting goods (designs and equipment)

What types of inventions are not eligible for patent protection?

Some types of inventions will not qualify for a patent, no matter how interesting or important they are. For example, mathematical formulas, laws of nature, newly discovered substances that occur naturally in the world, and purely theoretical phenomena -- for instance, a scientific principle like superconductivity -- have long been considered unpatentable. In addition, the following categories of inventions don't qualify for patents:

processes done entirely by human motor coordination, such as choreographed dance routines or a method for meditation
most protocols and methods used to perform surgery on humans
printed matter that has no unique physical shape or structure associated with it
unsafe new drugs
inventions useful only for illegal purposes, and
non-operable inventions, including "perpetual motion" machines (which are presumed to be non-operable because to operate they would have to violate certain bedrock scientific principles).

Can computer software qualify for patent protection?

Yes. Even though you can't get a patent on a mathematical formula per se, you may be able to get protection for a specific application of a formula. Thus, software may qualify for a patent if the patent application produces a useful, concrete, and tangible result. For example, the USPTO will not issue a patent on the complex mathematical formulas that are used in space navigation, but will grant a patent for the software and machines that translate those equations and make the space shuttle go where its supposed to go.

DISCLAIMER: This site and any information contained herein are intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter.

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