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Intellectual Property
University of Kansas School of Law
Torrance, Andrew W.

Patent Law

History & Subject Matter

Aristotle – did not approve of a patent system – could lead to instability
Middle Ages – individual credit and gain for inventions contrary to social mores
Venice – first real patent system (15th century)
– some earlier: corn mill designs, Florence: Brunelleschi for 1421 invention of a barge with a hoist for transporting marble

Patent – Latin: patere (to be open) – open letter of privilege from the sovereign

For other history, refer to handout

Requirements for Patentability
PTO reviews each application for: 1. invention fits one of the general categories of patentable subject matter
2. it has not been preceded in identical form in the public prior art
3. it is useful
4. it represents a nontrivial extension of what was known
5. it is disclosed and described by the applicant in such a way as to enable others to make and use the invention

OR: 1. patentable subject matter
2. utility § 101
3. novelty § 102
4. non-obviousness § 103
5. enablement § 112

Rights conferred by a Patent
Claims – “metes and bounds” of a real property deed
– come at the end of a written description

Specification – describes the invention
– names all the parts or components of the invention, describes how they work, and illustrates how they work together to perform the invention’s function

Patent confers right to exclude others from making, using, selling, offering for sale, or importing the claimed invention for: 17 years from date of issuance (prior to 1995), or 20 years from date of filing (1995-present)
– “negative right” – patent does not grant affirmative right to do anything
– regulatory review (FDA)
– patented invention may be covered by preexisting patent
– improvement patent
– right to exclude from improvement, but barred from using improvement herself unless holder of broad patent authorizes

Theory of patent law
Inventions are public goods that are costly to make and that are difficult to control once they are released into the world
– patent protection provides incentive for creation, development, and marketing new products

Patentable Subject Matter § 101
Process, machine, manufacture, composition of matter, or improvement thereof
Machine – an instrument consisting of parts, components, or elements, which are so arranged and organized as to cooperate, when set in motion, to produce a definite, predetermined, and unitary result
Manufacture – the production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties, or combinations whether by labor or by machinery
Composition of Matter – all combinations of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical admixture, or whether they be gases, fluids, powders or solids

Diamond v. Ch

s nor increasing the possession of the human race
Specific utility – an invention must actually perform its intended function
Beneficial or moral – Lowell v. Lewis (1817) – patents lack utility if used to “poison people, or to promote debauchery, or to facilitate private assassination.”
Juicy Whip v. Orange Bang (1999) – no basis in § 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public

Brenner v. Manson (1966) – patent is not a hunting license
– unless and until a process is refined to where specific benefit exists in currently available form, not justification for patent
– dissent: most difficult step is discovery, not as difficult to produce a commercially useful item, therefore patent should be ok

In re Fisher (2005) – claims are not an end of the research, but only tools to be used along the way in the search for a practical utility. Absent this, the claims have not been understood to the point of providing an immediate, well-defined, real world benefit to the public meriting the grant of a patent
– dissent: the findings do advance research, and should be patentable