patenteligibility

Patent eligibility, sometimes written as patenteligibility, is the threshold question of whether an invention falls within the categories of subject matter that can be patented under the applicable patent law. It is separate from other requirements such as novelty, inventive step, and industrial applicability, and it determines whether the invention may even be considered for patent protection.

In the United States, patent eligibility is defined by 35 U.S.C. §101 and is shaped by judicial exceptions for abstract ideas, natural phenomena, and laws of nature. The analysis often focuses on whether a claim is directed to a patent-eligible category (process, machine, manufacture, or composition of matter) and, if so, whether it contains an inventive concept that amounts to significantly more than the abstract idea itself. This Mayo/Alice framework is frequently invoked for software, business methods, and diagnostic or genetic inventions.

In Europe, the European Patent Convention excludes discoveries, scientific theories, mathematical methods as such, and schemes or methods for performing mental acts, playing games, or doing business as such. However, a claim may be patentable if it provides a technical contribution and solves a technical problem; computer-implemented inventions can be patentable if they have a technical character and contribute to a technical solution.

Other major jurisdictions maintain their own tests for eligibility, but generally limit patent protection to subject matter that is not merely abstract or purely theoretical. Across jurisdictions, eligibility is distinct from novelty and inventive step, which address prior art and non-obviousness, and from sufficiency of disclosure.

Examples of eligibility often hinge on technical effect: a new machine or device that transforms matter is typically eligible, whereas a pure abstract mathematical method without a technical application is not.