Perhaps the first and certainly the most basic question with respect to patentability is whether or not the claimed invention consists of patentable subject matter. In other words, is the claimed invention something that the patent laws are designed to protect?

The Legislative History of the 1952 Patent Act inform us that Congress intended the patentable subject matter referred to in Title 35, Section 101 to “include anything under the sun that is made by man.” Given that Congress intended everything made through human intervention to be patentable it is sometimes more helpful when discussing patentable subject matter to search for that which cannot be patented. In this regard the United States Supreme Court has repeatedly and consistently stated that there are only three categories of subject matter for which one may not obtain patent protection: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas.

Today, at least in the United States, there are few questions with respect to patentable subject matter. From time to time the United States Patent Office does attempt to breathe new life into rejections for want of patentable subject matter, but ultimately the legislative history and the guidance of the Supreme Court is clear. With this in mind, for better or for worse, in the United States virtually everything is patentable, including computer software, living organisims and business methods.

On the horizon one patentable subject matter issue may become the scope of the protection afforded to business methods. With respect to business methods, in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 cert. denied, 119 S.Ct. 851 (1999), the United States Court of Appeals for the Federal Circuit first categorically and unceremoniously did away with what had previously been come to be known as the business method exception to patentability. In this and subsequent decisions the Federal Circuit has not limited business method patents to any particular embodiment. Nevertheless, the United States Patent Office has interpreted this and other decisions to require a business method be used in conjunction with a computer in order to be patentable. It is hardly arguable that this is not the correct interpretation of the Federal Circuit precedent, but the Patent Office has nonetheless taken this position, which will remain in effect until either the policy is chaged at the office or an appeal is taken to the Federal Circuit and the Federal Circuit orders the Patent Office to award patents on business methods that are disembodied from computer programs. To be sure, this may seem rather minor, but those who follow patent law live for such controversy.

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