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Chisum on Patents
Copyright 2017, Matthew Bender & Company, Inc., a member of the LexisNexis Group.

1-1 Chisum on Patents 1.syn


Eligible Subject Matter


Donald S. Chisum

Chapter Summary


An invention may be patented only if it falls within one of the statutory classes of subject matter. This chapter of Chisum on Patents (Matthew Bender) covers Section 101 of the Patent Act, which establishes categories of patentable subject matter.

The chapter introduction traces the history of the statutory classes, describes their general purpose, and covers their statutory and constitutional limits and exceptions. The introduction also compares Section 101's traditional categorical approach under U.S. law with the provisions of the European Patent Convention, and discusses the TRIPS Agreement--the 1994 Agreement on the Trade-Related Aspects of Intellectual Property--which sets minimum standards for intellectual property protection, including patents.

The chapter explains when a "process" is patentable through notable cases such as Cochrane v. Deener and Tilghman v. Proctor. It also describes how the statutory class of "process" differs fundamentally from the other three classes, and reviews the conceptual problems courts have faced when adjudicating process claims.

The chapter concludes with a discussion on the special provisions applying to patent rights in inventions relating to national security, atomic energy, and aeronautics and space. It outlines the history behind these provisions, and provides detailed discussion on The Invention Secrecy Act and The Atomic Energy Act.

Chisum on Patents is the leading authority on U.S. patent law, and has been cited more than 700 times by the U.S. Federal Courts. This renowned publication provides attorneys with all the information required to secure a patent and protect a patent claim. Chisum on Patents covers all areas of U.S. patent law, including application, validity, infringement and significant precedents as determined by case law and amended statutes. It provides a chronological view of the law and its development, its current status in the patent world, and possible future direction. It also details major court decisions, patent statutes and regulations, and features the Federal Circuit Guide, which supplies abstracts--arranged by topic and date--of all the published decisions of the Court of Appeals since the Court began in 1982.


patent,eligible subject matter,TRIPS Agreement,European Patent Convention,patentable process,Cochrane v. Deener,Tilghman v. Proctor,patent rights,inventions


Chapter 7 discusses claims reading on inoperative subject matter. Chapter 8 addresses the mixing of statutory classes of patentable subject matter. Chapter 12 covers isolated improvements on common subject matter. See Chapter 23 for discussion on design patents. See Chapter 24 for coverage of propriety protection for commercially valuable plants.


For quick access to topically-arranged abstracts of more than 2,000 precedential, patent-related decisions of the U.S. Court of Appeals for the Federal Circuit and to track evolving trends in decisional law, see Patent Law Digest by Donald S. Chisum (Matthew Bender).

For complete coverage of proper procedures for filing patent applications and securing patent rights with the U.S. Patent and Trademark Office, including over 350 forms, see Patent Office Rules and Practice (Matthew Bender).

For complete coverage of licensing in all substantive areas of intellectual property, along with practical guidance on drafting individual clauses and complete agreements, see Milgrim on Licensing (Matthew Bender).

For guidance on every aspect of the patent process, from filing to grant, for all industrialized nations, see Baxter World Patent Law (Matthew Bender).

For timely, practical discussion on matters pertaining to a company's intellectual property assets, see Corporate Counsel Solutions: Intellectual Property Management: Strategies & Tactics (Matthew Bender).
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