PATENT LAW
Professor Rowe
Fall 2017
Substantive Overview: (use this as structure of analysis)
§101 Utility
Unpatentable subject matter
Laws of nature
Natural phenomena
Products of Nature (things that already exist in nature)
Abstract ideas (THIS IS TYPICALLY AN OBJECTION TO COMPUTER PROGRAMMING PATENTS)
Unapplied mathematical algorithms (THIS IS TYPICALLY AN OBJECTION TO COMPUTER PROGRAMMING PATENTS)
To be patentable, the invention must fall within at least one of the four classes of statutory subject matter
Processes
The machine or transformation test is not the sole test for deciding whether an invention is a patent-eligible “process” but it is still important in deciding whether it is patent eligible.
If it is tied to a particular machine or apparatus, OR
It transforms a particular article into a different state or thing
(use these tests to get out of abstract idea, etc)
Process claims are always described in steps (2 types) (can use both)
Method of using
May obtain a process patent on
A new use of a known product or
A newly discovered property of a known product
For both of these, you still have to ask for permission (cross-licensing) to not infringe on their patent (listerine dog paw cleaner example)
Method of making
Mayo v. Prometheus: A patent is invalid as a natural law
(1.) where steps in the claimed processes involve, in addition to natural laws themselves, well-understood, routine, conventional activity previously participated in by researchers in the field and
(2.) where upholding the patent would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.
(use machine/transformation test + natural law test + consider public policy of encouraging innovation by maintaining scientific tools)
Computer-Implemented Processes
Claims must be analyzed as whole, not dissected into their component parts, for purposes of determining if an invention falls within one or more of the §101 categories
Alice v. CLS Bank analysis: Starting point for analysis is Mayo (laws of nature and applied broadly to abstract ideas (Alice uses Mayo to abstract ideas)) in analyzing these inventions
Step 1. Determinable if the patent claims are pointed at ineligible patent claims (abstract idea, law of nature, natural phenomena)
Step 2. IF so, does any element in the claim ensure that the claim amounts to significantly more than the abstract idea itself
Step 3. Go to §101, 102, 103, 112
Mere inclusion of a computer is not enough
Ultramercial, LLC v. Hulu, LLC applying two new factors to Bliski: (1) the programs’ requiring complex computer programming and (2) the programs’ use of the internet and of a cybermarket environment.
The court believed that the internet is not a machine
Diamond v. Diehr: Grant of patent was proper because they were seeking to a patent an industrial process that involved a number of discrete steps
Business Methods Processes (Professor no like BM patents)
A process or method of doing business is patentable as long as the claimed method is not an unapplied, abstract idea or concept (Bilski)
Reliance on a mathematical algorithm (computerization of mathematical equations) is not a patentable process. Can’t patent a mathematical algorithm (Benson)
Machines
Synonymous with an apparatus – generally has moving parts, such as an internal combustion engine
The only real area of controversy involving the machine category is whether the programmed computers qualify as machines within the meaning of §101
The trend of recent case law is to generally answer this question in the affirmative
Compositions of matter
The SC defined the phrase “compositions of matter” as “consistent with its common usage to include ‘all compositions of two or more substances and… all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids’” Chakrabarty
“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”
Structure v Properties
The physical structure is what must be novel, not merely its properties
The discovery or recognition of a composition’s previously unappreciated property will not impart patentability to that composition if its structure is already known
Such a discovery might merit patentability if claimed as a process, but not a product
Purified forms of natural products
“Purified forms” of natural products may be patentable if sufficiently different from the nonpurified forms so as to be novel and nonobvious
Life forms
Primary issue: “whether it constituted an invention made by human intervention or product of nature”
Chakrabarty: living organisms are patentable. Patentable material because it is a nonnaturally occurring manufacture or composition of matter, a product of human ingenuity:
“having a distinctive name, character, and use.”
He did not discover it already existing in nature (that would not be patentable)
Myriad: manipulating, isolating, and purifying already existing structures in nature is not sufficient to satisfy subject matter.
Discovery v. creating (no matter how brilliant)
Manufactures
This is the “catch-all” category for human-made subject matter without moving parts, such as a helically grooved foam football
The Chakrabarty court defined the term “manufacture” as “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery”
Computer programs embodied in a tangible medium, such as floppy disks, are patentable subject matter under §101
Physical embodiment of an unapplied algorithm on a floppy disk and claimed as a manufacture is patentable
Plant patents (§161)
plant patents are available for
(1) Distinct and new varieties of plants AND
(2) must have been asexually reproduced
To asexually reproduce a plant means to grow a genetically identical copy through budding, grafting, or cutting
Design patents (§171)
This is governed by §171 which says that a design patent protects the “new, original and ornamental design for an article of manufacture”
Unlike utility and plant patents, design patents have a term of only 14 years from the date of grant
The protection afforded by a design patent is limited to the ornamental features of a design, and cannot encompass any features of the underlying article that are structural or functional
UTILITY :Does the invention provide some beneficial use to society?
look at the “usefulness” of what is being claimed, not what it produces unless that it also being claimed
US patent law requires that patentable inventions possess “practical utility” – to be patentable an invention must have some real-world use
Practical does not necessarily mean significant or extensive
Lowell v. Lewis:
An invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word “useful” therefore is incorporated into the act in contradistinction to mischievous or immoral.
The law does not look to the degree of utility; it simply requires that it shall be capable of use, and that the use is such as sound morals and policy do no discountenance or prohibit.
No requirement that invention be superior to an existing invention
Juicy Whip:
To violate §101 the claimed device must totally incapable of achieving a useful result
Test for utility: Whether invention is “incapable of serving any beneficial end.” (has to be credible though, like a pill to stop aging isn’t going to pass)
Exception: the utility requirement presents a more significant obstacle to patentability in chemistry and biotechnology.
Brenner v. Mason: you cannot get a patent for a new chemical compound unless you have a known use for it
Patent on scientific research tools (APPLIES ONLY TO BIOTECH AND CHEMISTRY STUFF:
TEST for substantial uti
accessible to the public interest in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was published.
Factors: To determine “sufficiently public accessible:” If not distributed to the public and never indexed, we must consider: the length of time the display was exhibited, the expertise of the target audience, the existence of reasonable expectation that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied
The more transient a display, the less likely it is to be considered a printed publication
The expertise of the intended audience can help determine how easily those who viewed it could retain the displayed material
Where parties have taken steps to prevent the public from copying temporarily posted information, the opportunity for others to appropriate that information and assure its widespread public accessibility is reduced
Ease or simplicity with which a display could be copied gives further guidance (to increase public accessibility)
1952 Act §102(a-g) Receives patent unless (we don’t cover c-f)
§102(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
Gillman Rule: A first secret invention cannot bar a second inventor because it is not “known or used.”
MAY LOOK AT SOMEONE ELSE’s ACTIVITY IN THIS COUNTRY OR A FOREIGN COUNTRY FOR PRIOR ART
requires knowledge or use that was publicly accessible at the time patented invention was made
Trade secrets are not publicly accessible and therefore cannot be prior art.
102(g) has NOT been similarly construed
§102(b) the invention was patented or descried in a printed publication in this or a foreign country or in a public use or on sale in this country, more than one year prior to the date of application for patent in the US or
Denies patentability to inventions that have been “patented” or
Described in a “printed publication.” (any document to the public, no matter where located)
Before the critical date
Anywhere in the world
If it was distributed under terms of confidentiality, you can argue against a printed publication. (accessibility to the public)
The invention was made by another who had not abandoned, suppressed, or concealed it.
ONLY LOOK AT YOUR OWN ACTIVITY
102(b) On Sale Bar:
There is loss of right to a patent when an invention has been sold or offered for sale in the U.S. by anyone more than one year before the application filing date
Product is on sale in the U.S. if Substantial activity prefatory to a sale occurs in the U.S.
An inventor who sells his patent rights to raise money to develop and perfect the invention does not invoke the on-sale bar.
TEST: Pfaff v. Wells Elec two conditions must be satisfied before the critical date to determine whether the product was “on sale” and thus barred;
The invention must be the subject of a “commercial offer” for sale; and
A “commercial offer” is one definite to qualify as an “offer” in the general contract law sense – where the other party could make into a binding contract by simple acceptance
