Patentable Subject Matter -- § 101 Utility -- § 101 Novelty -- § 102 Disclosure Req. – Non-obvious § 112 -- § 103 | | Patentable
Patents – § 101 • “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101 • Broad; permissive approach • Threshold test; “coarse filter” • Essentially a policy question; balance
Patents – § 101 -- Exceptions • Three judicial exceptions (Not patentable subject matter) • laws of nature • physical/natural phenomena • abstract ideas • These exceptions are “part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none.” ( Funk Brothers )
Patents – § 101 – Living Things • What about living things ? ( Diamond v. Chakrabarty ) • Key is whether human made • human engineered bacteria YES • found bacteria NO • new process for creating bacteria YES
Patents – § 101 – Laws of Nature • Must add enough ; must apply law of nature • Mayo v. Prometheus Cannot simply add “well- understood, routine, conventional activity” • Do claims preempt any/all use of law of nature?
Patents – § 101 – Laws of Nature • Compare to • Diamond v. Diehr (Arrhenius equation used in rubber curing machine) • Parker v. Flook (algorithm that calculates alarm limits in catalytic conversion of hydrocarbons) • “[C]oncern that patent law not inhibit further discovery by improperly tying up the future use of laws of nature” Mayo . • Deny patents on “basic tools of scientific and technological works”
Patents – § 101 –Laws of Nature • Asso’c for Molecular Pathology v. Myriad Genetics (on cert.)
Patents – § 101 –Laws of Nature
Patents – § 101 – Abstract Ideas • Machine-or-Transformation approach • tied to a particular machine or apparatus • OR transforms a particular article into a different state or thing • M-or-T not exclusive test ( Bilski v. Kappos ) • allow application of abstract idea • worry about preemption
Patents – § 101 – Abstract Ideas • CLS Bank Int’l v. Alice Corp. (Fed. Cir. 2012)
Patents – § 101 – Abstract Ideas • CLS Bank Int’l v. Alice Corp. • Emphasizes pre-emption concept • Cannot shut door to too many other inventions • Merely implementing on computers is not enough to meet M-or-T test • “[S]ingle most reasonable understanding is that claim is directed to nothing more than a fundamental truth or disembodied concept” = abstract idea
Patents – § 101 – Abstract Ideas • Ultramercial v. Hulu (Fed. Cir. 2011) NOT ABSTRACT
Patents – § 101 – Abstract Ideas • Again, what’s the concern? • What is Downstream invention – Claim 1 in the improve by changing ad Ultramercial length compared to value abstract of media product idea? • Do claims preempt? Ad for + change access to length based media on value product on Internet
Patents – § 101 – Abstract Ideas • Dealertracker v. Huber (Fed. Cir. 2011) ABSTRACT
Patents – § 101 – Abstract Ideas • Looking for some limitations capture of abstract idea by one inventor • Ultramerical – Internet; media products • But watch out for de facto preemption over abstract idea • Dealertracker – software, computers, internet address, only mental steps • Can use Machine-or-Transformation approach, but not final answer • Still ask the basic question – is the claimed subject matter too abstract?
Patents – § 101 – Abstract Ideas
Patents – § 101 – Utility • “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101 • “Operable or capable of use” • Real question for intermediate chemical and biological products • Matter of when do we award patents
Patents – § 101 – Utility • In re Fisher • Appeal from denial of patent at PTO • Claim 1. A substantially purified nucleic acid molecule that encodes a maize protein or fragment thereof comprising a nucleic acid sequence selected from the group consisting of SEQ ID NO: 1 through SEQ ID NO: 5. • Has uses – 7 listed on p. 183 • But no “substantial utility” • Not grant patent this early in development process
Patents – § 112, ¶ 1 – Disclosure • “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” 35 U.S.C. § 112, ¶ 1.
Patents – § 112, ¶ 1 – Enablement • The Incandescent Lamp Patent Claim 3 – carbonized paper Claim 2 -- + bulb Claim 1 – carbonized • What does fibrous or textile the material specification enable?
Patents – § 112, ¶ 1 – Enablement • Look at claim, and then determine does specification enable it? • Must teach to make and use claim • Don’t have to actually make • A person having ordinary skill in the art (“PHOSITA”) • Without undue experimentation • Ensure truly goes into public domain • Also patents as warehouse of knowledge
Patents – § 112, ¶ 1 – Written Description • Specification must describe the claim • “[R]easonably conveys to [the PHOSITA] that the inventor had possession of the claimed subject matter as of the filing date.” • Look at the level of detail • Difference in scope b/w disclosed species and claimed genus • Do not have to actually make • But external evidence is irrelevant
Patents – § 112, ¶ 1 – Written Description • Can enable but not describe • particularly if enable by undue experiment • Concern is “hunting license” • Mere research plans don’t create patent rights • Lockean aspect—only get reward for specific effort (description?) • But want to give inventor effective protection • More than just was exactly disclosed
Patents – § 112, ¶ 1 • Does this enable a nylon wire cutter? • Describe one?
Patents – § 112, ¶ 1 – Best Mode • Two prong inquiry • Subjective—did inventor believe best mode? • Objective—is it a mode regarding the invention (the claim)? • AIA § 15 – now only applies when getting the patent • not in litigation
Patents – § 102(a) – Novelty • “A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or”
Patents – § 102(a) – Novelty “before the invention” “by others” Invention Date Filing Date & Presumed Invention Date
Patents – § 102(a) – Novelty • “known or used . . . in this country” – Rosaire • ‘525 Patent and ‘085 Patent • filing date Sept. 26, 1939 • say invent in 1936 • Teplitz, in 1935-36, performed invention in Palestine, TX • Does this mean “known or used”? • Must have all elements of the invention • As long as “not secret”
Patents – § 102(a) – Novelty • “patented . . . or described in a printed publication” – In re Hall • Application filed on Feb. 27, 1979 • German dissertation allegedly anticipates • submitted to dep’t in Sept. 1977 • get Ph.D on Nov. 2, 1977 • sent to library on Nov. 4, 1977 • When is it a “publication”? • “public accessibility” • “at least to the public interested in the art”
Patents – § 102(b) – Statutory Bar • A person shall be entitled to a patent unless – (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or • similar two categories as in § 102(a) • but “in this country” limitation • focused on use or sale, not known
Patents – § 102(b) – Statutory Bar Anyone! 1 year grace period Filing Date – 1 Filing Date Year
Patents – § 102(b) – Statutory Bar • “public use or on sale” – Egbert • RE5216 filed Mar. 1866 • Made/tested it Jan-May 1855 • “intimate friend” uses, wears in public, shows to Mr. Sturgis • is this a “public use”? • fact not visible irrelevant • looking for restrictions/secrecy • What about § 102(a)?
Patentable Subject Matter -- § 101 Utility -- § 101 Novelty -- § 102 Disclosure Req. – Non-obvious § 112 -- § 103 | | Patentable
Patents – § 102(a) – Novelty • “A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or”
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