1. What Subject Matter Is Patentable Under a Section 101 Patent?
2. What Are the Statutory Categories of Invention?
3. What Are the Judicially Recognized Exceptions?
4. How Does One Deal With an Ineligible Subject-Matter Rejection?

A Section 101 patent refers to a type of patent issued to an inventor of a useful machine, process, manufacture, or composition of matter. It is important for inventors or commercial entities to obtain a Section 101 patent because it gives them the right to exclude other individuals or entities from producing, using, or selling their patented inventions for a certain amount of time.

What Subject Matter Is Patentable Under a Section 101 Patent?

If you plan to apply for this type of patent, you must ensure your invention belongs to one of the statutory categories that are patentable under Section 101. Also, it must not be one of the judicially recognized exceptions.

In an effort to promote the advancement of science and useful arts, the United States Congress defined the subject matter patentable under Section 101 as any new and useful machine, manufacture, process, or composition of matter; or any new and useful improvement to an existing invention under those categories. Any invention that meets the subject-matter requirement may be patented under Section 101. To be eligible, an invention must meet two subject-matter criteria:

  • The invention must fall under one of the four statutory categories of invention.
  • The invention must not be entirely a subject matter that encompasses a judicially recognized exception.

What Are the Statutory Categories of Invention?

  • Process: A mode of treatment of materials for producing a given result. A process can be an act or series of acts performed on the subject matter to reduce or transform it into a different thing or state.
  • Machine: A concrete object that consists of components, devices, or a combination of devices, including all mechanical devices or combinations of mechanical devices and powers necessary for performing a certain function and producing a desired result or effect.
  • Manufacture: A manually or mechanically produced article that is made of raw or prepared materials and gives those materials new forms, properties, qualities, or combinations.
  • Composition of matter: A composition of two or more substances or a composite article that results from chemical union or mechanical mixing, regardless of whether they are gases, fluids, solids, or powders.

What Are the Judicially Recognized Exceptions?

Judicially recognized exceptions include the following:

  • Physical phenomena.
  • Laws of nature.
  • Abstract ideas.
  • Certain practical applications of judicial exceptions.

Physical phenomena, laws of nature, and abstract ideas are the three exceptions to the broad patent-eligibility principles of Section 101. Although they are ineligible for patenting, products and methods that employ them to perform a useful function in the real world may be eligible.

When evaluating whether a claim fulfills the requirements of Section 101, the claim must be regarded as a whole in order to determine whether it is used for a specific application of physical phenomena, law of nature, or abstract idea, and not for the physical phenomena, law of nature, or abstract idea itself.

Besides physical phenomena, abstract ideas, and laws of nature, judicially recognized exceptions have also been described using other terms, such as:

  • Scientific principles.
  • Natural phenomena.
  • Disembodied concepts.
  • Mental processes.
  • Systems that solely depend on human intelligence.
  • Disembodied mathematical algorithms.
  • Formulas.

By establishing these exceptions, the courts show their view that the fundamental tools of technological and scientific work cannot be patented.

How Does One Deal With an Ineligible Subject-Matter Rejection?

A Section 101 rejection occurs when a patent examiner finds a claimed invention ineligible for patenting. Technically, patent eligibility is different from novelty or non-obviousness, but an invention's novelty and non-obviousness may improve its eligibility.

Step 1: Determine whether the claimed invention is a machine, manufacture, process, or composition of matter.

  • If it is not, then it is not a qualifying subject matter.
  • If it is, proceed to the next step.

Step 2A: Ascertain whether the claimed invention is a judicially recognized exception, that is, a natural phenomenon, law of nature, or abstract idea.

  • If it is not, the claim is a qualifying subject matter.
  • If it is, proceed to Step 2B.

Step 2B: Determine whether the claimed invention recites additional elements that significantly exceed the judicial exception.

  • If it does, the claim is not an eligible subject matter.
  • If it does not, the claim is a qualifying subject matter.

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