· 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 improvement thereof may obtain a patent thereof, subject to the conditions and requirements of this title.
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 AND 1970 Plant Variety Protection Act 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 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
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 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
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