Subject Matter Outline

Patentable Subject Matter

35 U.S.C. 101 Inventions patentable.

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 therefor, subject to the conditions and requirements of this title.

• Goal: avoiding pre-emption (having the patent encompass an existing fact, and prevent others from using it!)

TEST:

• 1. Abstract idea:

• 2. Inventive concept: practical application of that fact

  • That adds “significantly more”, to “transform the idea into patent eligible application” (Alice)

  • Other than the discovery of a fact (Mayo Collaborative Services v. Prometheus Laboratories SC, 2012)

  • Not a well known, routine, conventional activity previously engaged in by the scientific community

    • Preemption!

      • Upholding the patent would risk disproportionately tying up use of underlying natural laws, inhibiting use for future discoveries

  • Not merely implementing the abstract idea in a computer (Alice)

    • Eg. Solving a technological problem in conventional industry practice (Diehr)

    • Or with specific hardware (not generic computer) “tying to a computer”

      • Machine or transformation test

    • Not make patents depend on “draftsman’s art”! (Flook)

  • Similar but obviousness

    • Subject matter Inventive concept/fact of the world is obvious (independent of patent application)

    • Obviousness: Practical application of the whole claims is inventive

  • Test is the same across all matters (laws of nature, natural products and abstract ideas)

    • It does not matter if one have more human interaction than others (abstract ideas v. laws of nature) (Alice)

  • Policy: would new encryption systems pass the test?

  • It’s not good that the stress is on the machine

  • Alice is not clear + sweeping too broadly

    • It would limit patent trolls but also a lot more

• 1. Rule against patenting Natural laws

  • Eg. Dosage of a drug is not patentable (Mayo Collaborative Services v. Prometheus Laboratories SC, 2012)

    • (Dosage of thiopurine in relation to thiopurine metabolite levels in human body)

    • Claim: 1. Administering step + determining step + wherein step

      • “if a number below floor then increase; if a number above ceiling then decrease”

    • a. It was abstract idea + well known, routine, conventional activity previously engaged in by the scientific community

      • Despite having a specific application, there was no inventive concept besides the abstract idea!

    • b. Preemption!

      • Upholding the patent would risk disproportionately tying up use of underlying natural laws, inhibiting use for future discoveries

  • You can’t get around by limiting it to industry (Parker v. Fluck)

• 2. Natural products and substances

  • But a live, man made microorganism is patentable (Diamond v. Chakrabarty, SC 1980)

    • It’s non-naturally occurring composition of matter

      • They’re manufactured

  • 1. Naturally occurring, but artificially packaged

    • Ej. A particular mixture of self-fertilizing legumes, which inhibits bacteria is not patentable (Funk Bros. Seed Co. v. Kalo Inoculant, 1948)

      • Solution would have been different if he had made a new compound

  • 2. Naturally occurring, but isolated and purified

    • Extracting crystals from animal glands to make a medicine is patentable (Parke Davis & Co. v. HK Mulford Co., 1911)

      • Yes the product, but not the underlying chemical

      • It’s a new thing commercially and therapeutically

    • Existing, isolated gDNA is not patentable, but synthetic cDNA is

      • Isolation itself is not inventive

      • cDNA is not a product of nature

• 3. Abstract ideas and software

  • Eg. MRI machine

  • Excludes method for hedging against financial risk, which can be put in a mathematical formula (Bilski v. Kappos)

  • Excludes a computer-implemented software for managing and mitigating “settlement risk” (Alice Corp. Pty. Ltd. v. CLS Bank Intern, 2014)

    • a. It’s only the implementation of an abstract idea, which is not patentable

    • Reaffirms Mayo (and was taken by the SC as a follow-up)

Disclosure doctrines: Enablement, Written Description, Definiteness

• Utility

  • Brenner v. Manson

  • In re Fisher

  • PTO Utility Guidelines

  • Moral Utility

  • Juicy Whip, Inc. v. Orange Bang, Inc.

- Post AIA: no need to show best mode

• 1. Enablement - Can PHOSITA do it?

  • Teaching function (teaches other people science) + Proof requirement/Claim scope function (limit patent to what you contribute to the world – make you write about what you actually know)

  • At the time the application was filed

    • Enablement allows us to protect things that are covered in the claims but that were not known at the time of filing, as long as the application teaches us how to make the invention at the time of filing

    • This is a “temporal paradox” (Merges)

  • Problem for genus claims:

    • How broadly to write vs. what I have to disclose

  • “Undue experimentation”: Patent is enabled if PHOSITA can construct without it

    • How much? Depends on the area of technology and how much knowledge there is

      • Life sciences (high) vs. Mechanical (low – e.g. mere disclosure of the function! “fastener”)

    • Incandescent Lamp Patent

    • E.g. Chrystalline polypropelene case:

      • Later turned out to cover a more useful version

      • It was enabled since, at the time of filing, it taught how to make the invention as we knew it at the time

    • It can’t be a speculation or prophesy

      • Ej. Patent on galanthamine to Alzheimer’s patients, when I had not researched how effective it was (Jannsen)

        • The specification did not teach enough: no dosages

        • The claims mentioned “figuring out the chemicals that will be effective, then administer”

        • Does not show utility either!

  • Procedures

  • “Analog” Claims in Chemical and Biotech

  • Exploration of Patent Breadth

  • Economic considerations

• 2. Written description (§112 (b)): Are the claims supported in the specification?

  • Gentry Gallery, Inc. v. Berkline, Corp

  • Claim breadth

    • Avoid “gun jumping” (benefiting those who wait until they have an actual molecule)

      • Especially where the hard work is moving from idea to...

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