Patentable Subject Matter §101 Outline

SO WHAT DO YOU DO ON THE EXAM?

We have no idea what the law is. SO,

Chakrabarty: Anything under the sun made by man, but not Abstract Ideas, Physical phenomenon, laws of nature

• Judicially created exceptions

Pure Business Method: Stick with the Fed. Cir. Bilksi decision, then S. St. Bilski

• If disconnected from a computer is probably unpatentable. (Machine/transformation test). Or apply abstractness test (but we really don’t know what that means)

  • No idea how to figure out if it IS abstract, but have to go through the motions.

Software (including software running biz method):

• Don’t apply State Street — it’s been overruled.

• Start with Cybersource: Can this be done in someone’s head? Is this something we really need computers to do. [Are there embodiments that could be done without a computer?]

  • Any claim that can be done in a head, not OK. Pure mental process

  • And then, look through the other claims and see if it could be…

• For software that survives Cybersource, a couple options:

  • Rader’s test: Is it just so manifestly abstract that it just can’t be patentable.

  • Difference between embedded software and general purpose software. (Professor Predicts this will be integrated into CLS Bank). Easier to satisfy § 101 if the software is integrated into a product — e.g., a pacemaker’s software —as opposed to general purpose software. (Fed Cir. Thinks this is important…)

  • To what extent is the software abstract/vague versus complex? Is it tied to something that seems tied to _____?

Diagnostics: Think about diagnostics broadly. Rule:

• (1) Handle these cases under a law of nature test. Not machine/transformation, not abstract idea.

• (2) Laws of nature are not just really broad principles, but ANY kind of background rule on how things behave in the physical world.

• (3) Patent can’t claim the law of nature. Must claim a specific application with something more.

  • Need to look at the claim, look at the limitations in the claim, and cross off all the things that are serious limitations that aren’t laws of nature until you identify the law of nature.

  • Why would we cross off elements as not important?

  • What is the real innovation? The discovery of the law of nature or some great new application of the law of nature

• Identify law of nature; tell a story about the real invention was the discovery of the law of nature. Claiming an application of the law of nature, but the application is REALLY just the law of nature; then not ok.

• Exclude limitations in the claim that are obvious or in the prior art.

• Apply ONLY to diagnostic patents, or to patents that are similar — “Look for something, and here’s the correlation you’re looking for.” THAT would trigger the Prometheus test.

• DON’T Apply to physical objects, to business methods, etc.

Gene Patents:

• Product of nature doctrine. Souped-up version of novelty.

• Outcome is kinda simple: If something exists in nature prior to date of invention, regardless of whether we knew about it, then it isn’t patentable; doesn’t matter if the form in nature it’s embedded in something else.