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University of Minnesota Law School
Cotter, Thomas F.

Introduction. 3
Claim.. 3
Overview of the Patent System.. 3
Globalization and Patents Rights. 3
Patentable Subject Matter3
Introduction to the Patent Act3
The Bar to Patenting Laws of Nature, Physical Phenomena and Abstract Ideas. 5
Field Restrictions: Business Methods, Medical Procedures and other disfavored Areas. 8
Utility. 10
Introduction. 10
Beneficial Utility. 12
Practical or Specific Utility. 13
Novelty. 14
Definition. 14
Introduction Novelty and 102. 14
The standard for Anticipation. 17
References under section 102(a)19
Statutory Bars. 26
Introduction. 26
Section 102(b): The General Statutory Bars. 26
Nonobviousness. 32
Introduction: Nonobviousness and “Invention”. 32
Section 103 and the Basic Graham Inquiry. 32
Subtests of Nonobviousness. 33
The “Scope and Content of the Prior Art”. 36
Double Patenting????????. 38
a.    Example 1.. 38
b.    Example 2.. 38
c.    Example 3.. 38
d.    Example 4.. 39
Disclosure and Enablement39
Introduction. 39
The Written Description Requirement42
Definite Claims. 46
Best Mode Requirement46
Claim Interpretation and Infringement47
Interpreting Claims. 47
Overview of infringement51
Antitrust and Patents. 58
Antitrust v. Patent Misuse. 58
Inequitable Conduct63
Remedies. 66
Statutes controlling remedies. 66
Property vs. Liability. 66
283 Injunctive Relief. 66
Open claims: “comprising of”
“Closed” Claims: “Consisting of”
An In-between Format: “Consisting Essentially of”
The Body
Three Formal requirements for Claim Drafting
Independent and Dependent Claims
Means-plus-function Elements
Jepson claims
Overview of the Patent System
Patent Prosecution
Enforcement Actions
Globalization and Patents Rights
The Paris Convention
The 1970’s: Process Consolidation
TRIPS: Substantive Harmonization
Patentable Subject Matter
Introduction to the Patent Act
Section 101. Inventions Patentable
Machines, processes, manufacturers, compositions. 
Section 100. Definitions
Diamond v. Chakrabaraty
Chakrabaraty discovered a bacteria for something that didn’t exist in nature, that was used for decomposing oil spills
Lower court didn’t like the patenting of living things.
Supreme Court stated that the patent act is broad, and covers “anything” – w/ exceptions:
Laws of Nature
Physical phenomena
Abstract ideas
The importance of Chakrabarty
Narrow level, decided that living organisms are the proper subjects of utility patents
“Anything under the sun that is made man” vs. “Laws of nature, physical phenomena, and abstract ideas”
What is patentable vs. what isn’t patentable..
“Pushing the back the frontiers of chemistry, physics, and the like”: Field Restriction on patentability…
This ruling states that there might be more of a leniency towards patents that are focused on the scientific arts…
Statutory language and the role of the courts and the Congress
Is there a tension between broad interpretation (majority) vs. a antipathy towards monopolies.
The Patentability of Chakrabarty’s process claims
The process claim was allowed, so even if the dissent would have won, they still would have had some rights to something.
Funk Brothers
Differences from Chakrabarty
He didn’t find new species, the bacteria already existed
The bacteria wasn’t being used in a novel way (it was just separated out, and used in it

t the calculations can be done without a computer.
Tangible Transformations
Justice Douglas writes “Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”
The Algorithm formulation
Algorithms unpatentable
“The underlying notion is that a scientific principle, such as that expressed in respondent’s algorithm, reveals a relationship that has always existed.”
Diamond v. Diehr
A process that used a formula (computed by a computer) for the process of molding and curing molds – was held valid.
The court liked the fact that there was a physical transformation
‘New and useful’
The state of software patents…
The Supreme Court hasn’t dealt with software patentability since 1981
Lower court have addressed this
PTO initially was hesitant to grant these
The Federal circuit, however, ultimately took a very expansive reading.
Allapat (1994)
An inventor who applied for a patent, who came up w/ a machine that would be a rasterizer – which made a more smoother wave on a oscillater using anti-aliasing techniques
Why it was valid
Escapes the algorithm requirement because it creates a “new machine”
Useful, concrete and tangible
New machine doctrine makes sense?
Everytime you program a computer, do you create a new machine