International Patentable Subject Matter Considerations

March 2016

By: Gregory Gerstenzang 

Determining your international patent strategy can be an important business decision and imperative to ensuring the success of a product or service abroad. Each jurisdiction has different rules regarding patentable subject matter. Below are ten points that businesses and inventors should consider when seeking international patent protection:

Abstract ideas, mathematical formulas, and the discovery of a scientific principle, law of nature, or naturally occurring article

Several classes of subject matter are nearly universally unpatentable. The discovery of something, whether it is a scientific principle, law of nature, or naturally occurring substance is generally not considered to involve an act of invention, and is thus not patentable. The majority of jurisdictions consider abstract ideas and mathematical formulas to be mental processes and thus do not consider this type of subject matter to be patentable.

Computer programs or algorithms

Computer programs or algorithms, per se, are also unpatentable in nearly all jurisdictions. To be eligible for patentability a computer-based invention generally must include more than the mere receipt, manipulation, and output of data. Many countries, including the United States, Australia, and India have become more restrictive of patents on computer programs or computer-based business methods in recent years.

“Incredible” inventions

A purported invention that appears to violate a law of nature will be difficult to obtain patent protection for in any jurisdiction. Examples include perpetual motion machines and methods or apparatus for performing cold fusion.

Immoral/Illegal inventions

Most jurisdictions do not allow patents to be granted on inventions considered to promote immoral or illegal behavior. For example, inventions “expected to encourage offensive, immoral or antisocial behavior” are unpatentable in the United Kingdom. “Inventions contrary to the laws of the State or social morality, or that are detrimental to the public interest” are unpatentable in China. Inventions where the primary or intended use of which would be contrary to law or morality or injurious to public health would be unpatentable in India. European law explicitly holds that processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animals and animals resulting from such processes are unpatentable. The U.S. is an outlier with regard to this category of subject matter.

Methods of Medical Treatment

The majority of jurisdictions do not allow patents on methods of medical treatment. For example, methods of treatment of the human or animal body by surgery or therapy, and medical diagnostic methods are non-patentable in Europe, Canada, China, Israel, Japan, and most African and Middle Eastern countries. Methods of cosmetic treatment are generally excluded from this restriction. Methods of medical treatment are patentable in the U.S., however, injunctions or damages cannot be assessed against medical practitioners performing a patented method of medical treatment.

Industrial applicability

An invention must be “industrially applicable” to be patentable in many jurisdictions, for example, Europe, Israel, Russia, Saudi Arabia, and the UAE. In one example, a method of contraception was found to be unpatentable in the European Patent Office because it was directed to a private matter, rather than being “industrially applicable.”

Higher life forms

Higher life forms are not patentable in many jurisdictions. This limitation generally does not apply to microbial life forms, especially those not derived from nature or those derived through genetic engineering. If the broadest reasonable interpretation of a claimed invention as a whole encompasses a human being most jurisdictions would find the invention unpatentable. European law specifically states that inventions directed to cloning of humans, modifying the germ line genetic identity of human beings, and use of human embryos for industrial or commercial purposes are not patentable.

Inventions threatening national security

Many jurisdictions do not permit patents on inventions that might threaten national security if disclosed to the public. Inventions directed to nuclear energy that could potentially be weaponized are especially scrutinized under this criteria. In the U.S., the Atomic Energy Act of 1954 stipulated that “No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.”

Inventions that are not improvements

In a few jurisdictions inventions which do not advance the state of the art are not patentable. For example, Indian patent law requires that a patentable invention includes “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance.”

Aesthetic creations

Purported invention that are directed to merely aesthetic creations are unpatentable in many jurisdictions including Europe and members of the African Intellectual Property Organization. In most jurisdictions, however, including the U.S. and China, design patents are available to protect an ornamental design embodied in or applied to an article of manufacture.