What is the difference between “patent eligibility” under 35 U.S.C. § 101 and “patentability” under 35 U.S.C. §§ 102 and 103?

What Is The Difference?

Patents play a crucial role in today’s innovative landscape, allowing inventors to protect their ideas and inventions. Understanding the intricacies of patent law is essential for anyone involved in the fields of technology, science, and creative arts. Two fundamental concepts that often come up in patent discussions are “patent eligibility” under 35 U.S.C. § 101 and “patentability” under 35 U.S.C. §§ 102 and 103. While these terms may seem similar, they have distinct meanings and implications. In this article, we will explore the differences between patent eligibility and patentability, their significance, and the legal and practical implications of these distinctions.

Understanding the Basics of Patent Law

Before delving into the differences between patent eligibility and patentability, it’s essential to have a solid grasp of patent law as a whole. A patent is a legal document issued by a government authority, granting the rights to an inventor for their invention or discovery. This document gives the inventor the exclusive right to make, use, and sell their invention for a limited period, typically 20 years from the filing date.

Patent law serves several purposes—it incentivizes innovation, promotes economic growth, and ensures that inventors receive proper recognition and protection for their ideas. By granting a limited monopoly to inventors, patents encourage them to invest time, effort, and financial resources in developing new technologies and solutions that benefit society.

What is a Patent?

A patent is a legal tool that provides inventors with exclusive rights to their inventions. It acts as a contract between the inventor and the state, offering protection and recognition for their creations. To obtain a patent, an inventor must meet specific criteria set by the patent office, including novelty, non-obviousness, and industrial applicability.

Obtaining a patent is a rigorous process that involves preparing a detailed application, including a description of the invention, its technical specifications, and any supporting documentation. The application is then reviewed by patent examiners who assess its novelty and non-obviousness. If the invention meets the criteria, the patent is granted, providing the inventor with legal protection and exclusivity.

Once a patent is granted, the inventor has the right to prevent others from making, using, selling, or importing their invention without permission. This exclusivity allows inventors to commercialize their inventions, either by manufacturing and selling the product themselves or by licensing the rights to others.

The Importance of Patent Law

Patent law serves as the foundation for innovation across various industries. It provides inventors with a legal framework to protect their intellectual property, ensuring that they have the exclusive right to use, manufacture, and license their inventions. Without patent law, there would be limited incentive for inventors to invest in new technologies, potentially stifling progress and hindering economic development.

Furthermore, patent law encourages the dissemination of knowledge and promotes collaboration. When inventors disclose their inventions in patent applications, the information becomes publicly available. This allows other inventors and researchers to learn from existing knowledge, build upon it, and develop new and improved technologies.

In addition to protecting inventors’ rights, patent law also benefits society as a whole. By granting inventors a limited monopoly, patents create a competitive environment where different inventors strive to develop better and more innovative solutions. This competition drives progress and leads to the development of new technologies that address societal needs and challenges.

Moreover, patents play a crucial role in attracting investments and fostering economic growth. Investors are more likely to fund projects and startups that have protected intellectual property, as it provides a level of certainty and potential for returns on investment. This influx of capital fuels innovation, job creation, and overall economic prosperity.

Defining “Patent Eligibility” under 35 U.S.C. § 101

Patent eligibility refers to the initial requirement that an invention must meet to be considered eligible for patent protection. Under 35 U.S.C. § 101, an invention must meet four criteria to be considered patent-eligible:

  1. It must be a process, machine, manufacture, or composition of matter.
  2. It must be new.
  3. It must involve an inventive step.
  4. It must have industrial applicability.

The Criteria for Patent Eligibility

The first condition for patent eligibility is that the invention must fall within one of the statutory categories, which include processes, machines, manufactures, and compositions of matter. This requirement ensures that the invention is tangible, practical, and capable of being utilized or reproduced.

Additionally, the invention must be new, meaning it must not have been previously disclosed or made available to the public. This condition ensures that patents are granted for genuinely new inventions, rather than existing knowledge or technology.

Moreover, the invention must involve an inventive or non-obvious step. This criterion aims to prevent trivial or obvious inventions from being patented. The inventive step requirement ensures that the invention is truly innovative, involving a substantial departure from what is already known or obvious in the field.

Lastly, the invention must have industrial applicability. This means that the invention should be capable of being produced or used in any industry or field of technology. Industrial applicability ensures that the invention has practical utility and is not purely theoretical or abstract.

Examples of Patent Eligibility

Examples of patent-eligible inventions include new chemical compounds, innovative manufacturing processes, novel medical devices, and software algorithms with practical applications. These inventions meet the statutory criteria of being new, non-obvious, and industrially applicable, making them eligible for patent protection.

Exploring “Patentability” under 35 U.S.C. §§ 102 and 103

While patent eligibility determines if an invention is eligible for patent protection, patentability comes into play after an invention has passed the eligibility threshold. Patentability under 35 U.S.C. §§ 102 and 103 refers to the assessment of whether an invention is novel and non-obvious compared to the existing knowledge in the relevant field.

The Conditions for Patentability

Pursuant to 35 U.S.C. §§ 102 and 103, an invention must meet two key conditions to be considered patentable:

  1. It must be novel.
  2. It must involve an inventive step or be non-obvious.

Novelty is a fundamental requirement for patentability. An invention is considered novel if it is not identical or too similar to any publicly available prior art. Prior art typically includes existing patents, published articles, publicly accessible documents, and any other information that has been disclosed to the public before the filing date of the invention’s patent application.

In addition to novelty, the invention must involve an inventive step, meaning it is not obvious to someone skilled in the relevant field. The aim of the non-obviousness requirement is to ensure that only truly inventive and innovative solutions are patentable, as opposed to trivial or incremental advancements.

Examples of Patentability

An invention that meets the conditions of novelty and non-obviousness is considered patentable. For example, an improved method for filtering water that eliminates microplastics by utilizing a unique combination of materials and filtration techniques could be deemed patentable. Similarly, a groundbreaking medical device that enhances the accuracy of diagnosing a specific condition by utilizing a new algorithm and sensor technology could also meet the requirements for patentability.

The Key Differences between Patent Eligibility and Patentability

Now that we have covered the concepts of patent eligibility and patentability, let’s examine their key differences. While both terms relate to the patentability of an invention, they address different aspects of the evaluation process.

Legal Implications of the Differences

One of the significant legal implications of the distinction between patent eligibility and patentability is the application of different legal standards and requirements. Patent eligibility is determined by the statutory criteria outlined under 35 U.S.C. § 101, which primarily focuses on the nature and characteristics of the invention. On the other hand, patentability is assessed based on the conditions set forth under 35 U.S.C. §§ 102 and 103, which primarily consider the novelty and non-obviousness of the invention in relation to prior art.

These differences in legal standards contribute to distinct assessment processes during the patent examination. Patent examiners evaluate patent eligibility at the beginning, determining whether the subject matter of the application meets the statutory criteria. If the invention is deemed eligible, examiners then assess patentability, examining the novelty and non-obviousness of the invention in relation to the prior art.

Practical Implications of the Differences

The distinction between patent eligibility and patentability has practical implications for inventors, applicants, and patent owners. The different legal standards and requirements necessitate unique strategies and considerations throughout the patent application process.

For inventors, understanding the distinction is essential in shaping their inventions to align with the specific criteria for patent eligibility and patentability. By tailoring their ideas to meet these requirements, inventors can increase their chances of obtaining valuable patent protection.

Applicants must also be cognizant of the differences to ensure that their patent applications are properly prepared and formulated. They need to provide sufficient information and evidence to demonstrate that their inventions meet the criteria for both patent eligibility and patentability.

Moreover, patent owners should appreciate the divergent legal standards when enforcing their granted patents. While an invention may have met the criteria for patent eligibility, its patentability may be challenged based on the existence of prior art or the level of creativity involved.

Case Studies: Patent Eligibility vs. Patentability

To illustrate the differences between patent eligibility and patentability, let’s explore two case studies that exemplify these concepts in practice.

Case Study 1

Inventor A develops a new algorithm that significantly improves the efficiency of data compression for large video files. This algorithm effectively reduces file sizes by 80% without sacrificing quality. Inventor A applies for a patent to protect their invention.

Under the criteria for patent eligibility, Inventor A’s algorithm falls within the statutory category of a process. It is also new, involves an inventive step, and has industrial applicability. Therefore, the algorithm satisfies the requirements for patent eligibility.

However, when evaluating the patentability of the algorithm, the examiner finds that similar data compression techniques using different algorithms already exist in the prior art. While Inventor A’s algorithm is innovative and improves upon existing methods, it may not meet the threshold for non-obviousness due to the abundance of prior art in the field. Therefore, the examiner may find the invention lacking in patentability.

Case Study 2

Inventor B invents a new material with unique properties that can be used in various applications, including aerospace engineering and renewable energy production. The material is lightweight, durable, and exhibits exceptional thermal conductivity. Inventor B seeks to protect their invention with a patent.

Under the criteria for patent eligibility, Inventor B’s material qualifies as a composition of matter, meeting the first requirement. It is also new, involving an inventive step, and has industrial applicability. Therefore, the material satisfies the requirements for patent eligibility.

Upon assessing patentability, the examiner finds that similar materials with comparable properties already exist in the prior art. While Inventor B’s material has unique characteristics, the examiner may determine that it lacks novelty and non-obviousness in light of the existing knowledge in the field. Thus, the invention may not meet the criteria for patentability.


In summary, the difference between patent eligibility and patentability lies in their focus and evaluation criteria. Patent eligibility determines whether an invention meets the essential requirements for patent protection based on statutory categories, novelty, inventiveness, and industrial applicability under 35 U.S.C. § 101. On the other hand, patentability examines the novelty and non-obviousness of an invention compared to prior art under 35 U.S.C. §§ 102 and 103. Understanding these distinctions is vital for inventors, applicants, and patent owners to navigate the complex patent landscape effectively and make informed decisions regarding patent protection.

By comprehending the nuances of patent eligibility and patentability, inventors can tailor their inventions to meet the specific criteria, increasing their chances of obtaining valuable patent protection. Applicants and patent owners must also be aware of these differences to navigate the patent application process and effectively enforce their granted patents. Ultimately, a sound understanding of patent law and its intricacies enables innovators and creators to make the most of their innovative ideas and secure the rights they rightfully deserve.