Patent Section 101

Our subject matter eligibility guidance explains how office personnel including patent examiners should evaluate claims for patent subject matter eligibility under 35 u s c.

Patent section 101. The page provides a summary of the federal circuit and supreme court cases that have analyzed the topic of patent subject matter eligibility under section 101 of the patent act. Claim rejected under 35 u s c. This panel has decades of experience in section 101 and has represented patent owners numerous times in aia reviews.

Patent act states that a patent may be obtained for new and useful processes machines manufactures and compositions of matter. Section 101 court cases. As indicated above section 101 of the patent act indicates that patents are to be granted on any new and useful process machine manufacture or composition of matter this language means that an invention that does not fall under one of these four categories i e is not either a process machine manufacture or composition of matter.

Responding to section 101 rejection the guidance portion of bitlaw is provided by the attorneys of tysver beck evans we have a great deal of expertise in many areas of patent law including patent office rejections and legal invalidity challenges under section 101 please contact us if you need any assistance. 101 i e process machine manufacture or composition of matter in step 1 does not end the eligibility analysis because claims directed to nothing. Section 101 follows the wording of the existing statute as to the subject matter for patents except that reference to plant patents has been omitted for incorporation in section 301 and the word art has been replaced by process which is defined in section 100.

Examination guidance the office s current eligibility guidance is found in the ninth edition revision 10 2019 revised june 2020 of the manual of patent examination. Section 101 of the u s. Office 24 april 21 1987 indicating that human organisms are excluded from the scope of patentable subject matter under 35 u s c.

Whether a claim is directed to a judicial exception r 10 2019 i. 101 and section 33 a of the america invents act as being directed to or encompassing a human organism. This cle webinar will guide patent practitioners on how to draft their patent applications to overcome both section 101 and aia challenges.

See our new guidance on section 101 dealing with section 101. 2106 04 eligibility step 2a. In spite of the broad wording of this section the supreme court has for many years held that there are exceptions to subject matter eligibility that are not set forth in that statute.