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class6b

Page history last edited by PBworks 16 years, 6 months ago

·         Requirements for patentability

o   Patentable Subject matter (§101)

§  Invented or Discovered

o   Utility (§101 & §112)

§  Useful

o   Novelty (§102)

§  New

o   Non-Obviousness (§103)

o   Enablement (§112)

§  Ability to describe the invention in such a way that others can make use of it

·         Patentable Subject Matter § 101

o   Definition

§  Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful [EC1] improvement thereof may obtain a patent thereof, subject to the conditions and requirements of this title.[EC2] 

o   Types

§  Process

§  Product

§  Manufacture

§  Composition of Matter

§  New and Useful Improvement

o   Notes

§  Congress made an exception to the patent laws which said you can’t patent medical research (huge public policy against this, hospitals were refusing treatment due to this)

§  By Doyle Act à allows universities to get patents used from taxpayers dollars

§  Invention v. Innovation à Which should we reward?

·         Utility § 101/§112

o   Notes

§  Utility doesn’t mean:

·         FDA approved

·         Fully marketable under all conditions

§  Post Brenner

·         Extended the time before you could get a patent à get capital funding

o   Definition

§  Need to show specific and substantial use that is specifically related to this class of inventions

§  If it is not obviously useful or it is not credible

§  You only need a small, credible utility

§  A person having ordinary skill in the art, would be able to understand why this is useful

·         Cases

PATENTABLE SUBJECT MATTER (§101)

Diamond v. Chakrabarty, 447 U.S. 303 (1980)

FACTS:

Patent is assigned to GE

Chakrabarty invents a bacterium which breaks up components of crude oil (value for oil spills since they can “eat” oil)

Chakrabarty claims the bacterium itself as a patent

PTO rejects it

 

PH:

PTO Rejects

Federal Circuit Appeals Court Reverses

Supreme Court Affirms the Federal Circuit Court à Chakrabarty gets the Patent

 

ANALYSIS

·         PTO view

o   Rejects because:

§  It is a living thing AND

§  It is a product of nature

o   Congress created two plant protection acts : 1930 Plant Act[EC3]  AND 1970 Plant Variety Protection Act[EC4]  which allowed patents for plants

o   Since Congress made an act which allows patents for PLANTS but not bacteria, then bacteria must not be patentable subject matter under § 101.

·         Federal Court Appeals / Supreme Court view

o   There is nothing in the plant acts that focuses on the living vs non-living. The acts are more focused on whether something is MADE by HUMANS or not.

o   The plant act says:

§  The relevant question is “whether IT has been invented by a human being or not.” AND

§  Did not exclude the patentability of unanticipated inventions

§  As long as something is the product of human ingenuity à it will be patentable[EC5]  under § 101

o   “The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter, to include anything under the sun that is made by man.”

 

CONCLUSION

·         What is patentable

o   Non-naturally occurring products of human ingenuity

o   Distinguish between discovery and invention

§  It’s not about living vs dead

·         What is non-patentable[EC6] 

o   Denies patent protection to natural phenomena and abstract ideas

o   Leave the basic building blocks of science free

o   “Morally Free”

o   Examples:

§  Laws of nature

§  Physical Phenomena

§  Abstract Ideas (mathematical formulas)

 

Parke-Davis & Co. v. H.K. Mulford Co., 189 F.95 (DSNY 1911)

FACTS:

·         Takamine creates a process that isolates a pure substance from the glands of animals (a purer version of something than can be found in nature) à becomes medically useful at this point

·         Takamine assigns his patent to Parke-Davis

 

ANALYSIS

·         “It became for any purpose, a new thing”

·         The change that takes place, that is the result of human ingenuity, that becomes commercially valuable is deserving of a patent.

CONCLUSION

Was granted a patent

 

UTILITY (§101 & §112)

 

Brenner v. Manson, 383 U.S. 519

FACTS:

·         Invention was a steroid that could potentially have tumor inhibiting effects on mice

o   It is a steroid that is RELATED to the known substance, but not proven yet

 

ISSUE:

·         Is there UTILITY (aka patentable) if it is related to something that is known to have tumor inhibiting effects

 

ANALYSIS

·         Until we know what utility is:

o   We won’t know what the limits are to apply to the patent[EC7]  AND

o   It may block off too large an area of scientific research.

§  We want people to compete in the marketplace in order to find the best way to use something

 

CONCLUSION

·         A patent is not a hunting license à it is not a reward for the search, but compensation for its successful conclusion

·         It is NOT enough that something is the focus of serious scientific study, you need to be able to show:

o   Not EVERY use of the invention

o   But A USE for the invention

·         Some specific benefit must exist in currently available form in order to have UTILITY

·         Reduced to production of a product shown to be useful

o   Doesn’t have to be marketable, a prototype is fine

·         Court is preventing the patenting of knowledge, they want to patent inventions instead

 

In re Fisher

 

·         Expressed Sequence Tags (ESTs)

·         43 million known ESTs

·         Gene sequences, usually determined to ause the manufacture of a given protein

·         Here “mere objects of use testing” identified the gene

·         In the absence of an identification of the function of the underlying genes, “the claimed ESTs have no been researched and understood to the point of providing an immediate, well-defined, real world benefit to the public meriting the grant of a patent.

·         Research tools is not a specific utility in this case


 [EC1]Have to show usefulness and the showing much be credible

 [EC2]Constitutional basis is the promotion of science and useful arts

 [EC3]Asexual

 [EC4]Sexual but excludes bacteria

 [EC5]This is the TEST for § 101

 [EC6]We do this because as a matter of public policy, there are some things we do not want to monopolize since it would prevent a lot of scientific research and the social costs are too high

 [EC7]The public won’t know what the “metes and bounds” are of the invention

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