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University of Connecticut School of Law
Wilf, Steven R.

Patentable 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 therefor, subject to the conditions and requirements of this title.
Diamond v. Chakrabaty, Supreme Court 1980
–         everything under the sun, made by man is patentable
–         Congress contemplated that the patent laws would be given wide scope
–         The laws of nature, physical phenomena, and abstract ideas are not patentable
–         HELD: the patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature’s handiwork, but his own, accordingly it is patentable subject matter under sec. 101.
–         This is the case that stands for “everything under the sun made by man is patentable”
–         The court construed 101 very broadly
–         Dissent
o       Do not extend monopoly further than congress extended
Gottschalk v. Benson, 409 U.S. 63 (1972)
–         HELD: The Supreme Court held that it was a mathematical formula
–         Cite cases: It is not patentable because it is a law of nature,
–         The court said that they were not using the mathematical formula
–         Ideas
o       Maybe the courts were not ready to open up the flood gates for software
o       It is now recognized that manipulating data in a computer is patentable subject matter, this is an old case
o       The court was worried that it would cover unknown conversions, (it was not limited to a specific application)
o       They think that this guy is just trying to patent a math formula
Diamond v. Diehr, 450 U.S. 175 (1981)
–         This is the guy who applied the mathematical formula to his rubber press machine
–         HELD: We view the respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula
–         When a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e

to the conditions and requirements of this title.
Any new and useful process
This is really a non issue in mechanical and electrical
There are three related conditions for utility
The invention must be operable
If you say it does a thing, it better do that thing
Should have some purpose for humanity (benefit to humanity)
There is no utility if it is injurious to the health or humanity of society
They do not do this anymore
It must disclose how to use the invention
Brenner v. Manson, 382 U.S. 519 (1966).
–         new process showing to make a steroid compound
–         the inventor discovered the process but he did not discover the utility
–         You need to say what the utility is in the chemical field
–         You can not claim utility by saying that a new compound is made
You can not claim utility by saying that the compound is being studied for potential uses, or that analogous compounds are being studied