IP LAW SURVEY Source + Subj matter + Utility

SOURCE OF PATENT LAW & INSTITUTIONS:

Code:
Constitution: Art 1 8 cl 8 Patent Act: 35 USCA 1-376 is the sole source of US patent law

Institutions:
Legislature Executive: US Dept of Commerce, US Patent and Trade Mark Office Apply with examiner Appeal to Board of Patent Appeals & Interferences (USPA) (Appeal to Fed. Circs) Judiciary: Fed Circs & Sup. Ct. Role: Interpret statute (Congress says what is patentable) Define scope (Court says what is not patentable) Cases: patent rejections infringement cases

SUBJECT MATTER: what is patentable

Rule: anything under the sun made by man
Patent: -----------------------Stat. Requirements: useful, novel, non-obvious -subject matter & utility 101 any invention which is a new & useful process, machine, manufacture, composition or new & useful improvement abstract idea not included (E=MC2) patent expires 20 years from the date of application -----------------------------------------------Subj matter summary: Human made products (manipulated organism) are pat subj. matter Abstract ideas (such as abstract bus models) are not pat subj. matter Utility summary:

DIAMOND v. CHAKRABARTY:what is patentable: Anything under the sun made by man + non-naturally occurring manuf or compos of matter*
SYNOPSIS: Broader def: where human intervention Narrower def: whether products are from nature or humans Anything under the sun made by man can be pattd Distinction is in whether the products are from nature and man-made (not living v. non-living) Objects discovered in nature is not patentable subject matter live human-made microorganism is patentable subject matter DISPOSITION: Useful bacteria, genetically manipulated by inventor is patentable** ANALYSIS: General: non-naturally occurring manuf or compos of matter* a product of human ingenuity** having a distinctive name, character, and use** Bacteria analysis: rule: new bacterium with markedly different characteristics from any found in nature having the potential for significant utility unique isolated not repeated by nature FACTS: Bacteria claim (genetically engineered to consume oil) NOTES & APPLICABLE DICTA: not clear from 101 if can patent a life form no abstract ideas, laws of nature, physical phenom congress passed plant statue law to correct Courts statutory construction- plants allowed to be patented Funk case: product claim where combined two things together which did not do anything different (questionable analysis) (wide scope intended by congress) formalistic interpretation of 35 usc 101: dict def of terms + any = congress intended wide scope for pat. subj. a rule that unanticipated inventions are w/o protection (until congress say otherwise) conflicts with core concept of patent law

DISSENT: pat laws attempt to reconcile deep seated us anitpathy to monoplies with need to encourage progress significance: biotech industry

-novelty & loss of right 102 -non-obvious subject matter 103 -enabling disclosure 111-114 -prosecution formalities (what is in the patent) -----------------------Protections: prevents others from making, using, offering for sale, selling, or importing invention doesnt give owner right to make, use, sell invention (my note: like Abomb) defenses: able to use invention for amusement or philosophical reason -----------------------Policy: copyright and patent law: advancing public welfare by incentivizing authors and inventors to create (inherent conflict b/t desire to disclose and need to limit access) *the patent process is supposed to be hard- to enable progress some policy considerations for denying patents on discovered inputs: sometimes just found as opposed to discovered & too important as an input to give patent (like patenting new air or plant that cures cancer) -----------------------Whats should be in the patent: Patent claims: Scope: utility, design, plant Types of claims: process, machine, manufacture, composition Claim: delineates property rights in idea of invention Specification/description: informs on particulars of invention Patent document: Specifications: description of the the technical problem faced by the inventor and how the inventor solved the problem Claims: (legally binding language) Independent--Broader, overarching claim: what is claimed is... Dependent claims--claims that adds more limitations: **patentee wants the broadest claim possible, while the dependent claims are used as a safety net if the court decides knock out broader/independent claims *Single sentence rule Preamble/introduction Transition

Open: comprising [used for something, but could be used for something else] Closed: consisting of [used for specific purpose] Hybrid: ...consisting essentially of... [used for x, but could be used for something else]) Body (elements and restrictions and dependent claims) Drawings Preferred Embodiment: detailed description of what the patent covers -----------------------Definitions: *prior art (references):* prior patents, publication, knowledge (on the same patent scope/subject matter) *patent prosecution* filing for patent * *office action*= rejection of pat. app. *Interference:* when two parties file same patent, the Board determines whose application take priority priority for person who reduced it to practice first, after conceiving of it

Week 2: Bilski- Utility

CLASS M_wk2 Court have found that isolated DNA has a markedly different chemical structrure than something different in nature (therefor patentable subj. matter) (...therfore patentable) Patenting processes were starting to get ridiculous If it doesnt serve a gatekeeping role, people can get claims covering a large range of topics... If the patent claim purely mental steps, it cannot be patented Focus on processes Utility: (Bilski precedent) The patent should be specific, and tangible (Diamond v. Diehr: Rubber molding press) In contrast to abstract (Gottschalk: method of converting binary code) Court was trying to determine where Bilski fit (came up with MOT test, which was disputed in Sup Ct.) Circuit ct says Bilski process flunks test [Gottschalk----------------Bilski--------------Diehr]

CLASS: going to have to make a determination under this topic by example (Bilski and note cases)**** this must be a discussion by analogy BILSKI V. KAPPOS (101 Subj. eligibility) Abstract ideas in the form of business methods (hedging) are not patentable ANALYSIS: Ct affirms reject of pat app Abstract investment strategy/ idea hedging is a concept patenting hedging would give monopoly and preempt use in all fields CLASS: determination of whether too abstract in practice it is difficult to figure out what is too obvious, abstract, patentable court seems uncomfortable with a rule that may disqualify applications of technology in the future The MOT doesnt solve the ridiculous patent problem- it simply give MOT ridiculous patent results court struggling with processes that are sufficiently tethered to an application it is concerned with the breadth of the claim issue: whether something is to abstract or concrete (but court does not give very clear guidance) See pg 111: USPTO claim: process from computing how far a value is from an average* COURT SAYING ****** Cant claim algorithm must say when it will be used must say how it will be used if the claim leaves open a lot of possibilities- it will not be patentable FACTORS the more the claim looks like Bilski, the less likely it will be patentable out if it doesnt contain action verbs- mere thought no tangible aspect to claim (or feels like attempt to patent a concept) the more the claim looks like Diehr, the more likely it will be patentable action verbs transformation of something in the real world

Court looking for tangible application in the real world Machine-or-transform test not sole way to determine eligibility of process claim (just helps determine if claim is process per 101) [contrary to federal circ holding: produces a useful, concrete, tangible result] b/c not what cong. intended patent laws be given wide scope MOT Rule process implemented with a machine specifically devised or adapted to carry out process in a way that is not conventional/trivial or transforms an article from one thing into another -TECHNOLOGY progresses in unexpected ways= interpretation of rule changes (what was acceptable for industl age may not be acceptable today) CLASS: the MOT rule is a clue in the determination of utility Business method process not excluded/ possibility Process included method per 100(b) STEVENS CONCUR: better to hold that a claim that merely describes a method of doing bus does not qualify as process Pat Act terms should be read as traditionally understood in context of pat law ct reduced application to hedging-- it was more than that ct doesnt give rule as to what const. unpatentable abstract idea CLASS: this is +1 hedging BREYER CONCUR: (good summary?) what all appear to agree on: 101 is broad but not unlimited (see abstract ideas) transformation of one thing into another is a clue that idea is patentable m-o-t test is therefore not the exclusive test but anything which produces a useful, concrete, & tangible result is not necessarily eligible NOTES 109-119 what is a machine? Circ ct j.prudence indicates that a machine is something concrete, consisting of parts, which produces a certain result what is transformation? transformation must be central to the process purpose--> but what is transf.? pg. 115: copyrights a bad fit for software (software patents remain controversial)

(esp. with narrow application by courts & b/c it protects expression and not the functional elements of the software, no reverse engineering protected by patents)

UTILITY: (usefulness) Src: const + 101 + Court interpretation Court interpretation: operability (does the invention work as claimed) Class wk 2 wed: unsuccessful inventions (perpetual motion machines) chemical inventions (inventors dont understand what happened yet, or the process by which it happened) biotechnology (express sequence tags- identify thing, but not sure what they do) **inventions of questionable social benefit (moral utility)**--Fed ct got rid of this aspect of utility BENEFICIAL (MORAL UTILITY): the fact that a product can be alters to made to look like something else is a specific benefit to satisfy the statutorily requirement of utility substantiality (sometimes interpreted as: degree of usefulness per polices of patent law solving a problem with invention) Brenner v. Manson **Class wk 2 wed: utility requirement forces patentee to disclose what the concrete application is in the real world/ something meaningful** must identify a discrete useful utility **invention must be specific and substantial** it is not sufficient that a product might be a useful as an object of scientific research (patent is not a hunting ground) ----------process by which the steroid is produced utility of steroid was inferred, yet not evidenced Class wk 2 wed: benefit by analogy (adjacent homologue of the steroid produced had known tumor-inhibiting effect in mice) Class wk 2 wed: MAIN ARG. prob: ***the court has reason to believe that adjacent homologues do not have the same effects*** **It is not sufficiently predictive** (of the same results) ANALYSIS: Inventions must have practical utility (serve a practical

function) to be patentable until the process claim has been reduced to a production of a product shown t be useful, the metes and bounds of the [patent] monopoly cant be delineated TEST: the process must already be useful (not merely have the potential to be useful) HARLAN CONCUR/DISS: the utility of Chemical research per se outweighs the need to requires a specific utility be stated in the claim NOTES 124-125 substantial utility is a confusing doctrine operability: not every objective claimed must be met before operability is satisfied Patent designed for hedging losses (process patent app) reduced to mathematical formula