Silicon Valley Business School

Patents & IP: Patentable Subject Matter
Free Extracts from the Patents & Intellectual Property Course
Below you are free to explore extracts of the learning materials included in this course. If you're interested in educating yourself on these topics, we recommend that you review all these materials. If you're looking for a credential, please take a look at the certificate version of this course which will test your understanding of the materials and track your progress through the course until you have completed it and earned your certificate.

  • Video ~ Essential Requirements for a Patent
In order for an invention to be patentable, it must be new, useful and non-obvious.

  • Video ~ Patentable Subject Matter
In this video, you will find out what is patentable under U.S. Patent law.

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

  • Video ~ Strange Truths About Patentable Subject Matter
This voice narrated slideshow outlines the types of inventions that are patentable. It also outlines some of the common reasons the Patent Office gives for declining Patent applications.

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if: “(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or “(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

  • Video ~ Software & Business Methods Patentability
The law surrounding the patentability of software patents has changed significantly in recent years. This video discusses the patentability of software inventions in the U.S. and explains how hardware inventions are more patentable under the current patent rules.

  • Video ~ Is Software Patentable After the Alice v. CLS Case?
Video discusses the United States Supreme Court case of Alice v. CLS which deals with patentability of abstract ideas and, indirectly, software patents.

The "Alice" case has had a significant impact on the patentability of software inventions. The Court held that patent law should not restrain abstract ideas that are the "building blocks of human ingenuity" and held all of Alice's claims ineligible for patent protection.

This case brought the first amendment into conflict with patent rights. Judge Mayer was concerned that its claims "could reasonably be read to cover most methods of screening for harmful content while data is being transmitted over a network." Notably, he concluded that "[e]ssential First Amendment freedoms are abridged when the Patent and Trademark Office ("PTO") is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression."

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