Patent English in the Context of Patent-Eligibility

Journal of Far East University General Education, Vol. 9, No. 1, pp. 39-50 (2015)

16 Pages Posted: 19 Apr 2016

Date Written: January 2015

Abstract

The patent system is used to boost technical innovation by granting to an inventor an exclusive right to stop others from exploiting her inventions. The system requires an inventor to file a patent application to a designated governmental agency. To file a patent application, the applicant usually needs a specialist who is familiar with patent prosecution and patent law. To become a patent specialist in Taiwan, a person might have to pass the patent attorney bar exam where “Patent English” is one of the test subjects. But, the scope of “Patent English” has not been well elaborated since the test subject “Patent English” was created. This paper defines “Patent English” as a kind of English for special purposes in the context of patent prosecution. “Patent English” is used to convey thoughts or knowledge from one specialist to another specialist. In the context of patent prosecution, specialists have to address various legal issues when deciding whether to file a patent application. One of those issues is “patent-eligibility.” Under 35 U.S.C. § 101, a law of nature, a physical phenomenon, or an abstract idea cannot be a patent-eligible subject matter. In this paper, court decisions related to “patent eligibility” are analyzed to illustrate how a patent specialist should talk about the eligibility issue. First, this paper defines the scope of the context related to patent-eligibility issues. While doing so, this paper also introduces some concepts in the American patent law. Second, several selected court decisions are analyzed in terms of frequent words (e.g., nouns, verbs.) and sentence structure. Those cases are relatively important cases. Before analyzing decisions, this paper will discuss proposed theories related the analysis. This paper has several findings. First, the issue of “patent-eligibility” is often related to a process invention and rarely related to a product invention. A process claim is featured with a claim of several steps. Second, a way to explain why a claim is not patent-eligible follows some pattern. This paper lists some sentence examples that could serve as teaching examples for a course of Patent English.

Keywords: Patent law, patent English, patent eligibility, 35 U.S.C. § 101

Suggested Citation

Chen, Ping-Hsun, Patent English in the Context of Patent-Eligibility (January 2015). Journal of Far East University General Education, Vol. 9, No. 1, pp. 39-50 (2015), Available at SSRN: https://ssrn.com/abstract=2764015

Ping-Hsun Chen (Contact Author)

National Chengchi University ( email )

Taiwan

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