When discussing patent eligibility vs. patentability, it's important to keep two things in mind. Whenever you apply for a patent, your invention must be novel and useful. Different nations have different definitions based on their cultural, legal, and business requirements. These definitions and requirements are especially important for innovations related to software and medical methods.

Patentability Considerations

While cultures, legalities, and business are three entirely different entities, they do share common issues and countries tend to address those issues using related criteria. The first consideration regarding patentability is the need to avoid patents that will prohibit further innovation.

In the United States, for example, precautions are made to ensure the product is very specific, not an abstract idea. Meanwhile, in other countries, similar patents may not be awarded at all.

Patenting authorities all over the world do not look favorably upon patents that prevent others from carrying out their jobs. This mostly pertains to the medical field. The European Patent Office (EPO) is hesitant to award medical method patents if they will inhibit doctors from treating their patients.

In a similar vein, business method patents have to be so specific they don't put common systems and procedures out of operation for other companies.

Copyrights vs. Patents

It's important to distinguish between patents and copyrights. Take a look at software. It can usually be copyrighted. If a patent authority denies a patent, copyright protection is often enough.

Copyright protection is also inexpensive. They're granted automatically as soon as an application is released. They also last longer than patents. Where patents typically last 20 years, copyright protections can last up to 70 years.

However, a copyright doesn't protect the underlying technologies within software. This is why applicants forego the ease of a copyright application and consider the difficulty and expense when making a patent application. Take Adobe Photoshop. That's copyrighted as a software application and the name "Adobe" is trademarked, but it also holds many other patents.

Software Patents in the United States

In the United States, a software invention is deemed patentable if it fulfills the following two requirements:

  1. It must be unique; it must be something new.
  2. It must be tied to a machine. The hardware platform where the software runs must be so specific, otherwise a patent will not be granted for an abstract process. It must point to a specific component in the physical hardware.

There are three kinds of software that are not able to be patented. They are:

  1. An abstract idea
  2. An algorithm
  3. A scientific law

On June 19, 2014, the United States Supreme Court made an important decision pertaining to software that cannot be patented in the case of Alice Corp. v. CLS Bank. This case set a precedent whereby the United States Patent and Trademark Office (USPTO) will reject computerized versions of abstract ideas.

Because of this case, the number of rejected software patent applications has more than doubled, falling into a classification of inventions that are no more than abstract ideas.

Intellectual property attorneys struggle to figure out what would not be considered an abstract idea. The USPTO is planning to release a new examination of their rules to clarify this meaning. In the meantime, software patents remain particularly difficult to attain.

Medical Patents in the United States

Certain medical methods may be patented in the United States if they meet three requirements:

  • They must be so specific with limitations that are easily identified.
  • They must be a method of treatment for a specific condition using a specific drug.
  • They must possess a central transformative effect. Meaning, they have to fundamentally change the target audience.

Business Methods Patents in the United States

Business methods patents are nothing new. They've been allowed in the United States since 1988. You'll note, however, that the Alice Corp. decision has changed the landscape here, too. A business methods patent is possible if the result is concrete, useful, and produces a tangible result. It must demonstrate real-world value. Something that's merely a concept or needs more study will not be granted a patent.

If you need help with patent eligibility vs. patentability, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.