Patents Outline
I. Statutory requirements of patentability
A. Subject matter
§ 101 – Inventions patentable. 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 therefore, subject to the conditions and requirements of this title.
Algorithms and software
Gottschalk v. Benson: process patent for a computer program for converting binary-coded decimal numerals into pure binary numbers was not patentable subject matter as mathematical formulas and algorithms may not be patented; such a discovery is too removed from the useful or arts or commercial world so it’s unclear what is being given away if we allow the patent.
Parker v. Flook: process patent for updating alarm limits was found to be unpatentable subject matter. The test the court used was to take away the mathematical algorithm and determine if there was anything novel remaining worthy of patenting (effectively overruled by Diehr).
Diamond v. Diehr: process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter. A scientific truth, or the mathematical expression of it, is not a patentable invention, but a novel and useful structure created with the aid of knowledge of scientific truth may be.
i. Laws of nature, natural phenomena, and abstract ideas are not patentable.
ii. The focus in any statutory subject matter analysis should be on the claim as a whole; so it is irrelevant that a claim may contain, as a part of the whole, subject matter which would not be patentable by itself.
Software and business methods
In re Allapat: a computer operating pursuant to software for creating smooth waveform display in a digital oscilloscope may represent patentable subject matter as a machine.
i. Certain types of mathematical subject matter, standing alone, represents nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection.
State Street Bank & Trust Co. v. Signature Financial Group, Inc.: There is no business method exception to statutory subject matter; such patents should be treated as processes.
i. To be patentable, an algorithm must be applied in a useful way.
ii. The question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to – process, machine, manufacture, or composition of matter – but rather on the essential characteristics of the subject matter, in particular, its practical utility.
Life forms
Diamond v. Chakrabarty: Question of whether oil-eating bacteria was patentable. Court holds that statutory subject matter includes “anything under the sun that is made by man.”
i. Generally excluded from patentability:
1. Laws of nature
2. Physical phenomena and
3. Abstract ideas
ii. Livin
sufficient to satisfy the statutory requirement of utility.
Chemistry and biotechnology
Brenner v. Manson: In interference hearing for a process patent for making certain steroids, Manson filed an earlier application but was rejected for failing to disclose utility despite including an article that a similar steroid appeared to have tumor-inhibiting effects on mice. A process patent in the chemical field cannot be patented until the process claim has been reduced to production of a product shown to be useful.
i. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research
In re Brana: court overturns rejection for an antitumor compound because it failed to disclose utility; shown to work against tumor models
i. Tumor models may represent a specific disease against which the claimed compounds are alleged to be effective
Proof of an alleged pharmaceutical property for a compound by statistically significant tests with standard experimental animals is sufficient to establish utility.
