Select Page

Intellectual Property
University of Dayton School of Law
Lech, Robert

INTELLECTUAL PROPERTY – SPRING 2007 – PROFESSOR LECH
TEXT: INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE BY MERGES, MENELL AND LEMLEY

Open book exam

CHAPTER 3: PATENT LAW

2. An Overview of Patent Law (p. 124)

a. Requirements for Patentability

35 USC § 101-103: Useful, novel and non-obvious

Novel: § 102
– no-identical-prior-invention
– If sold for more than a year b/4 patent application, it is not novel
– Was it made before?
– Was there a prior art or prior knowledge

Utility: § 101
– Very minimal obstacle
– Includes experimental
– Only non-useful when there is “no practical utility”

Non-obvious: §103
– most important requirement
– Must be a big enough technical advance over the prior art
– Requires an “inventive leap.” (bottom of p. 225)
– Would a researcher who is aware of all the prior art think to create the claimed invention? (p. 226)

35 USC § 112
– Description of the invention being patented
– Would one of ordinary skill in the art be able to make and use the invention?
– Quid pro quo for patent protection.
– Disclosure and enablement requirement

b. Rights Conferred by a Patent (p. 125)

– “A patent confers the right to exclude others from making, using, selling, offering for sale, or importing the claimed invention for a specific term of years.” (p. 126)
– Enforced for 20 year minus the amount of time the patent spent in the prosecution process.
– Exclusionary right
– Improvement patent –

sness
(5) Enablement
(see above section for explanation)

1. Patentable Subject Matter

35 USC § 101: “any… process, machine, manufacture, … composition of matter, or … improvement thereof…”

Diamond v. Chakrabarty
– Looked to legislative intent to determine that living things are patentable
– Was it manufactured? Would probably help w/ the inventor’s claim
– Line draw between discovery and invention (p. 135)
– 35 USC § 100: Invention = “invention and discovery.”

Parke-Davis & Co. v. H. K. Mulford Co. (p. 135)
– Adrenaline case
– Is this covered under § 101?
– There needs to be a new use.
– You need to change it to work
– Almost anything is patentable!!!
– Purification exception to the product of nature doctrine: Can’t patent a product of nature unless you purify it.

Can NOT patent and abstract idea.

CHAPTER 7: PROTECTION OF COMPUTER SOFTWARE

D. PATENT PROTECTION

1. Is Software Patentable Subject Matter? (p. 1043)

– Can NOT patent an algorithm but you can patent the process in which the algorithm is used. Algorithm must be used in a useful way.

State Street Bank & Trust v. Signature Financial
– Hub and spoke program – automated accounting process.
– Useful, tangible and concrete
Statutory subject matter …