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University of Connecticut School of Law
Greene, Hillary

Patent Law Greene Fall 2014
Hoops to Jump:
§101 Subject matter and utility
§112 Issues:Enablement, Written Description, Definiteness, Best Mode
§102 Novelty
§103 Obviousness
§101 and §112
§101 patentable eligibility standard
Subject matter
Written description
Best Mode
Patentable Subject Matter 
35 USC §101:  Any new and useful:
Process (same as method)
Machine (collection of elements)
Manufacture, or
Composition of Matter
Or new and useful improvement thereof
Diamond v. Diehr (US 1981):  Anything under the sun made by man is patentable, including living genetically engineered organisms 
§§ Living things are patentable – if genetically engineered
§§ The Plant Patent Act & Plant Variety Act  (is the only living organisms that can be patented?)
Rules v. Standards:  scholars frequently note that legal norms can be established through more hard-edged rules or through more general standards that require the consideration and balancing of several factors.
§§ Chakrabarty and Bikski:  Court rejected opportunities to impose per se rules limiting the scope of patentable subject matter and opted to evaluate patentable subject matter by more open-ended standards
§§ Chakrabarty:  looked to “human ingenuity”
§§ Bilksi:  looked to whether claims are “abstract”
Bars to Patenting 
Not patentable subject material:
Scientific principles, mathematical discoveries (methods of using principles are patentable subject material) – patenting scientific principles would hamper scientific progress, which would contradict the policies of patents
Atomic weapons
Devices used for illegal purposes
Method of doing business
Things which are naturally occurring
Method which is purely mental
Bar to Patenting Laws of Nature, Scientific Principles, and Abstract Ideas o Historical foundation – O’Reilly v. Morse (US 1854):  Morse invented telegraph, Court found claim 8 invalid because it was not limited to specific machinery described in spec; instead claimed the use of electric current developed for making/printing characters at any distance and by any means.  The court said that this claim would cover all future inventions based on basic principle
§§ Rule:  claim was too broad
§§ Rule:  “discovery of a principle in natural philosophy or physical science is not patentable”
§§ Rule:  cannot claim what is not in the spec
§§ Tension for courts:  want to provide incentives for innovation v. great concern awarding a broad patent for this technology
§§ Rule: patenting principles would hamper scientific progress, which would contradict the policies of patent
o Software – Not Patentable SM
§§ A process claim directed to a numerical algorithm is NOT patentable subject matter because the patent would wholly pre-empt the mathematical formula and would be a patent on the algorithm itself (Gottsbalk v. Benson (US
Claiming a method for converting binary-coded decimal (BCD) numerals into purely binary numerals – not patentable
The process claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary numerals (BCD to pure
binary numerals is effectively like an idea)
§§ Physical Transformation requirement:  process can be patented irrespective of machinery used, if it can be transformed
§§ A process for curing synthetic rubber which includes a mathematical formula and programmed digital computer is patentable subject matter (Diamond v.
Diehr (US 1981))
Presence of a software element did not make an otherwise patenteligible machine/process unpatentable
If invention as whole meets requirements of patentabilitythat is, it involves “transforming or reducing an article to a different state or thing”it is patent-eligible, even if it includes a software component.
Question to ask is whether the claim is seeking patent protection for the formula in t

ions, whether by hand or by machinery
Patentable microorganism is a non-naturally occurring manufacture/composition of matter; a product of human ingenuity
having a distinctive name, character, and use  
Myriad Case page 158
§§ Isolated DNA sequence
Business Method Patents:
§§ Bilski v. Kappos (US 2010):  An abstract idea is not patentable SM, such as one designed for business that claims a process for instructing buyer/sellers on how to protect/hedge against risks – it is too abstract to let it be patentable §§ Machine-or-transformation test:  An invention is a “process” only if:
It is tied to a particular machine or apparatus, or
It transforms a particular article into a different state or thing
• Machine-or-transformation test is NOT the sole test for deciding whether an invention is patentable process; M-or-T is a clue o Congress never limited it to M-or-T test (nothing says that process = M/T)
Supreme Court:feels that test is arcane; it is a test, but not THE test; test was okay for Industrial Age
§§ Business Method patents – mentioned in 35 USC 273, therefore maybe business patents are okay; not clear
• 9 Justices are still grappling with it themselves
35 USC §101:  requires a patentable invention to be any new and useful process, machine, manufacture, or composition of matter of any new or useful improvement thereof
35 USC §112: requires patent application to disclose 
Utility – need some identifiable benefit; needs to be present in order to be deemed an invention by PTO; there is overlap between §101 and §112