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Patentable Subject Matter

Patentable, statutory or patent-eligible subject matter is subject matter which is eligible for patent protection. The national legislation or international treaty decides if the subject matter is patentable or excluded from patentability as a matter of policy. Canadian Intellectual Property Office (CIPO) grants patents only for physical embodiments of an idea, or a process that results in something that is tangible or can be sold. This excludes theorems and computer programs However, business methods are patentable. The European Patent Convention provides a non-exhaustive list of non-patentable subject matter which includes discoveries, scientific theories, mathematical methods, aesthetic creations, presentations of information etc. The United Kingdom Patent Office has adopted the following test to provide a structured and more helpful way of applying the statutory test for assessing patentability:

  1. Is the claim properly construed?
  2. Is the actual contribution identified?
  3. Does it fall solely within the excluded subject matter?
  4. Is the actual or alleged contribution actually technical in nature?

The United States Patent and Trademark Office in October 2005 issued interim guidelines for patent examiners to determine if a given invention meets the statutory requirement of being a useful process, manufacture, composition of matter or machine. These guidelines assert that a process, including a method of doing business must produce a tangible result to be patentable. New interim guidelines were issued in August 2009 to use a Machine-or-Transformation test to determine patentability after the Bilski case. The question of what should and should not be patentable has engendered a number of battlegrounds in recent years, setting against each other those that claim patents would cause increased innovation and those that claim patentability is only for private good and would do public harm.

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