Joe Lally (left) and Temple Keller are intellectual property attorneys in the Austin office of Jackson Walker LLP. (Courtesy photos)
Most rejections issued by patent examiners at the U.S. Patent and Trademark Office are based on the statutory provisions relating to novelty and nonobviousness: that is, whether an invention is new and sufficiently different from the “prior art” that existed beforehand. See 35 USC. §§ 102, 103. This article, however, discusses Section 101, which defines the patent-eligible categories of inventions.
Section 101 extends patent eligibility to “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” On its face, this provision would appear to impose few limits on what might be patented. With some notable exceptions, courts have historically been reluctant to create additional restrictions that go beyond the statutory language. For example, in Diamond v. Chakrabarty (1980), the Supreme Court found that “Congress intended statutory subject matter to ‘include anything under the sun that is made by man.’”
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