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University of Florida School of Law
Rowe, Elizabeth A.

Patent Law
Prof. Rowe
Patentable Subject Matter
·         Process
·         Machine
·         Composition of Matter
◦     chemical composition
·         Article of Manufacture
◦     no moving parts
Invention Requirements
·         Useful (sec. 101)
·         Novel (sec. 102)
·         Non-obvious (sec. 103)
Adequate Disclosure – Sec. 112
·         Must be described with sufficient precision and detail
◦     to permit one skilled in the art (the “PHOSITA”) to practice the invention
◦     to inform others what they must refrain from doing to avoid infringement
·         in exchange for the patent, you must disclose to the public
Term of Patent
·         If filed AFTER June 8, 1995
◦     20 years from date patent application was FILED
·         If filed BEFORE June 8, 1995
◦     17 years after Issuance, or
◦     20 years from filing
▪     whichever is later
·         US – “First-to-Invent” System
◦     Whoever is the first to “invent” is the patent owner
▪     Other countries use a “first-to-file” system
·         Whoever without authority
◦     makes
◦     uses
◦     offers to sell or
◦     sells any patented invention (within the US) or
◦     imports into the US
Reading a Patent (Book Including Candy…)
·         Title [54] ◦     Name of the Invention
·         Inventor [76] ◦     an inventor cannot be a corporation
◦     must always be a person
·         Patent Number [11] ◦     referred to by last 3 digits
·         Date of Patent [45] ◦     the “Issue Date”
▪     the Filing Date is [22] ·         Field of Invention
◦     the prior art
◦     the industry
·         Background of the Invention
·         Summary of the Invention
·         Brief Description of the Drawings
·         Detailed Description of the Invention
◦     Includes: “What is claimed is:”
▪     Claims define the invention
Rationales for Patent Law
1.      Provide Incentives to engage in desirable behavior (invention)
2.      Encourage disclosure of information
3.      Stimulate technological advancement
4.      Serve as facilitator of markets
1.      patents as assets w/ value
Patent Prosecution Appeals
1.      PTO Examiner
2.      PTO Board of Patent Appeals and Interferences
3.      Dist. Ct. for the Dist. Of Columbia (can skip)
4.      Ct. of Appeals for the Federal Circuit
5.      Supreme Court
Patent Infringement Appeals
1.      District Court
2.      Court of Appeals for the Federal Circuit
3.      Supreme Court
Forms of Patent Protection
·         Utility Patents
◦     most common patent
◦     technological products, processes
◦     cover what is functional
·         Design Patents
◦     “new, original and ornamental design for an article of manufacture”
◦     design cannot be “primarily functional”
▪     appearance only
35 USC 101: defines the subject matter that may be patented
·         a person who “invents or discovers any new or useful process, machine, manufacture, or any composition of matter, or any new or useful improvement thereof, may obtain a patent…”
◦     “machine, manufacture, or composition…” = Product Claim
Non-Patentable Subject Matter
·         Laws of Nature
·         Natural Phenomena
·         Products of Nature
◦     “if God made it, he gets the patent”
◦     you can't patent a product of nature
·         Abstract Ideas
·         Unapplied Mathematical Algorithms
◦     applied math IS patentable
Process Claims
·         Two Types
1.      Method of using
2.      Method of Making
1.      eg: cereal bar patent – “method for preparing improved conditioned oats…”
·         May obtain a process patent on
1.      A new use of a known product, OR
2.      A newly discovered property of a known product
1.      May have to pay royalties to outstanding patent owners
·         TIP: Try to have BOTH product and method claims in the application
·         involves living organisms; the “manipulation” of life
·         a naturally-occurring substance CANNOT be patented
·         in order to be patentable, a human being must have made significant changes to it in some way
·         J. Frankfurter: “Everything that happens does so in accordance with the 'laws of nature' even if imperfectly understood.”
◦     would make it impossible to patent biotechnology
Diamond v. Chakrabarty (1980)
·         created oil-eating bacteria
◦     combination of other bacteria w/ plasmids
·         Claims for:
1.      Method of Making the bacterium
2.      Method of Using the bacterium
3.      Product claim toward bacterium itself
·         PTO denied claim because it was a “product of nature”
◦     Alternatively, that it was a living thing, and therefore outside the purview of Title 35
◦     Thinks Congress should decide whether the rule applies
·         Supreme Court Question: “whether re

the activity also infringes an unexpired patent for
▪     a medical device
▪     a medical instrument
▪     a drug
Computer Software
Supreme Court
·         Gottschalk v. Benson (1972)
◦     Computerization of mathematical equations could not shift them from the realm of ideas to that of industry
·         Diamond v. Diehr (1981)
◦     Grant of patent was proper because they were
▪     seeking to patent an industrial process that involved a number of discrete steps
Federal Circuit
·         Freeman-Walter-Abele test
◦     when math algorithm is applied in one or more steps of a claim, the requirements of section 101 are met
·         AT&T v. Excel Communications (Fed. Cir. 1999)
◦     focus should be on whether the claimed invention achieves a “useful, concrete and tangible result”
◦     rejects F-W-A test
Business Methods
·         Hotel Security Checking v. Lorraine Co. (1908)
◦     System employed certain forms that tracked sales and ensured that waiters submitted appropriate funds at the close of business
◦     2d Circuit invalidated the patent
·         State Street Bank & Trust Co. v. Signature Financial Group (1998)
◦     “Hub and Spoke” system for investments
◦     Patent allowed
◦     District Court applies F-W-A test
▪     Concludes that it involves no physical transformation
▪     Long established that business plans and systems are not patentable
◦     Federal Circuit
▪     Patent does not claim an abstract idea
·         but a programmed machine that produced a “useful, concrete, and tangible result.”
▪     Even if the useful result is expressed in numbers, such as price, profit, percentage, cost, or loss
◦     Judge Rich's Logic
▪     Subject-matter exclusions are
·         laws of nature
·         abstract ideas
·         natural phenomena
▪     Only way to exclude math algorithms is abstractness
·         an invention is not abstract if useful
·         this invention shows practical utility
·         thus, it is not abstract