· What is eligible for patenting?
· Composition of Matter
· What is NOT eligible?
· Laws of Nature
· Natural Phenomenon
· Pre-existing ► in the public domain
· Skills – that aren’t usually exactly repeatable
· Hypo – Amazonian Athletes Foot Leaf:
· We find a leaf that cures athletes foot – we can’t patent the leaf itself – natural phenomenon
· We can find the active ingredient – isolate and purify it.
· Now we can get a patent on the purified substance, AND the process of making the compound, AND the process of using the leaf to cure athletes foot.
· Once we’ve patented the chemical – we own the rights to it – even if someone else finds out htat it grows hair later.
· We did the work to isolate the purified form – it never existed in that form until we made it.
Is there an algorithm?
Are there sufficient transformational steps?
Is there a physical application?
Freeman-Walter-Ablee Test (FWA)
Is the formula recited in the claim directly or indirectly?
Directly – is the claim no more than the formula itself?
i. YES – then unpatentable
ii. NO – Is it applied in any manner to the physical elements or a process or the steps in a process? If so – then the claim is patentable.
How to draft a software claim so it doesn’t run into the traps of Benson and run afoul of §101:
Application – relate it to some real-world application
Computer – uniqueness – faster, more accurate, more reliable, can do things beyond human capacity with head and hand
Additional Steps – physical transformation steps of the input into a different output
Claim it as a machine. Anything you can do in software can be done in hardware.
Gottschalk v Benson – Inv wants to patent the algorithm of converting deciman numbers into binary numbers, for any purpose, in any type of computer. Not Limited to any particular art or technology.
· RULE – a math formula, having no substantial practical application except in connection with a digital computer, cannot be patented.
· One cannot patent an idea.
· A procedure for solving a given math problem is an algorithm – the procedures set forth are a formulation for programs to solve that kind of generalized formulation.
· Court of Patent Appeals tries to defy the SC in granting patents for computer code – by finding other ways to do it.
· Mathematical formula has no substantial practical application except in connection with a digital computer – it’s a patent on the algorithm itself.
· MUST have a concrete practical application
Diamond v Diehr – INV developed a process for curing rubber, included several steps including a computer which constantly monitored several variables. EX said that INV was trying to patent the formula and it was statutorily not allowed.
· RULE – patentable claims do not become invalid because they include a mathematical formula.
· Claims must be taken as a whole – INV is claiming a process for molding rubber and not the formula directly.
· INV is transforming an article to a different state or thing, and that is precisely what the patent laws were designed to protect
Arrhythmia Research Technology v Corazonix – INV of a machine and process to analyze heart functions, his apparatus took signals from the heart – analyzed them backwards in time in a method that would enable the user to determine if an oncoming heart attack was imminent.
· RULE – If a math algorithm recited in a patent claim only applies to the physical elements of an apparatus or steps in a process, then the claim is patentable subject matter.
· Discussion Freeman-Walter-Ablee Test
· Is the process claim independent of the math formula?
· 1. Is the formula recited in the claim directly or indirectly?
· A. Directly – is the claim no more than the formula itself?
· i. YES – then unpatentable
· ii. NO – if it is applied in any manner to the physical elements of a process or the steps in a process, the claim is patentable.
In RE Alappat – INV created a device which made Oscilloscope displays more clear. His invention utilized a formulae to make pixels closer to the signal stronger, and those further away from the signal weaker – the end result was a much clearer signal.
· RULE – a general purpose machine programmed to perform particular specialized functions may be patentable if it creates a un
Even if the inv serves NO PURPOSE it will still be patentable.
Brenner v Manson – INV invents a steroid but doesn’t know what it does. He says it looks an awful lot like homologue which is used to cure cancer in mice.
· RULE – a process or a product which has no known use or is useful only in the sense that it may be the object of scientific research is not patentable because it is not “useful.”
· NOTE – prior to 1950 the PTO assumed that all chemical compounds were necessarily useful and therefore didn’t conduct any specific inquiries.
· JUDGE STORY: “a useful invention is one which may be applied to a beneficial use in society, in contradistinction to an invention injurious ot the morals, health, or good order of society, or frivolous and insignificant. And upon the assertion that to do so would encourage inventors of new processes to publicize the event for the benefit of the entire scientific community, thus widening the search for uses and increasing the fund of scientific knowledge”
In Re Brana – INV – composition of matter – an anti tumor compound – that he shows his utility by proving it works on mice. That it’s more effective than a previous compound. The previous compound is almost identical – with a “non=symmetrical substitution” than a “symmetrical substitution..” INV hadn’t tested his new compound, but was trying to get through utility by saying that his new compound was very close to another existing (and tested) compound.
· RULE – applicants must show a specific use for their substances and satisfy the evidentiary requirements in order to prove utility.
· To claim that a substance is for “the treatment of diseases” and “antitumor substances” are too nebulous to satisfy a patent application.
· BUT, because it was similar to leukemia drug, it could be patented.
· Court found that EX confused FDA requirements with patentability requirements