Patent Law and Policy

1
Patent Law and Policy

• University of Oregon Law School
• Fall 2008
• Elizabeth A. Tedesco

Patent Law and Policy, Fall 2008 Class 3,
Slide 1
2
Patentable Subject Matter

• 35 U.S.C. 101. Inventions Patentable
• Whoever invents or discovers any new or 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.
• 100. Definitions
• When used in the Patent Act unless the context
  otherwise indicates
  
• The term invention means invention or
  discovery.
  
• The term process means process, art or method,
  and includes a new use of a known process,
  machine, manufacture, composition of matter, or
  material

Patent Law and Policy, Fall 2008 Class 3,
Slide 2
3
Gottschalk v. Benson (1972)

• Claimed a method for converting binary-coded
  decimal (BCD) numerals into pure binary
  numerals.
  
• Here the process claim is so abstract and
  sweeping as to cover both known and unknown used
  of the BCD to pure binary conversion.
  
• The mathematical formula involved here has no
  substantial practical application except in
  connection with a digital computer, which means
  that if the judgment below is affirmed, the
  patent would wholly preempt the mathematical
  formula and in practical effect would be a patent
  on the algorithm itself.
• Definition of algorithm
• a procedure for solving a mathematical problem
  (as of finding the greatest common divisor) in a
  finite number of steps that frequently involves
  repetition of an operation broadly a
  step-by-step procedure for solving a problem or
  accomplishing some end especially by a computer
• The Court notes, but claims not to be competent
  to speak about, practical considerations of
  examining software patents.
  

Patent Law and Policy, Fall 2008 Class 3,
Slide 3
4
Diamond v. Diehr (1981)

• 1. A method of operating a rubber-molded press
  for precision molded compounds with the aid of a
  digital computer, comprising
  
• The respondents here do not seek to patent a
  mathematical formula. Instead, they seek patent
  protections for a process of curing synthetic
  rubber. Their process admittedly employs a
  well-known mathematical equation, but they do not
  seek to pre-empt the use of that equation.
  Rather, they seek only to foreclose from others
  the use of that equations in conjunction with all
  of the other steps in their claimed process.

Patent Law and Policy, Fall 2008 Class 3,
Slide 4
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State Street Bank v. Signature Financial Group
(1998)

• Systems provides for a daily allocation of
  assets for two or more Spokes that are invested
  in the same Hub. The system determines the
  percentage share that each Spoke maintains in the
  Hub, while taking into consideration daily
  changes both in the value of the Hubs investment
  securities and in the concomitant amount of each
  Spokes assets.
• The mere fact that a claimed inventions
  involves inputting numbers, calculating numbers,
  outputting numbers, and storing numbers, in and
  of itself, would not render it nonstatutory
  subject matter, unless, of course, its operation
  does not produce a useful, concrete and tangible
  result.

Patent Law and Policy, Fall 2008 Class 3,
Slide 5
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TRIPs Agreement, Article 27
Patentable Subject Matter 1. Subject to the pr
ovisions of paragraphs 2 and 3, patents shall be
available for any inventions, whether products or
processes, in all fields of technology, provided
that they are new, involve an inventive step and
are capable of industrial application
2. Members may exclude from patentability
inventions, the prevention within their territory
of the commercial exploitation of which is
necessary to protect ordre public or morality,
including to protect human, animal or plant life
or health or to avoid serious prejudice to the
environment, provided that such exclusion is not
made merely because the exploitation is
prohibited by their law. 3. Members may also excl
ude from patentability (a) diagnostic, th
erapeutic and surgical methods for the treatment
of humans or animals (b) plants and anim
als other than micro-organisms, and essentially
biological processes for the production of
plants or animals other than non- biological and
microbiological processes...
Patent Law and Policy, Fall 2008 Class 3,
Slide 6
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State Street Bank v. Signature Financial Group
(1998)

• District court In effect, the 056 Patent
  grants Signature a monopoly on its idea of a
  multi-tiered partnership portfolio investment
  structure patenting an accounting system
  necessary to carry on a certain type of business
  is tantamount to a patent on the business
  itself.
• Federal Circuit response Whether the patents
  claims are too broad to be patentable is not to
  be judged under 101, but rather under 102,
  103 and 112. Assuming the district court
  statement to be correct, it has nothing to do
  with whether what is claimed in statutory subject
  matter.

Patent Law and Policy, Fall 2008 Class 3,
Slide 7
8
TRIPs Agreement, Article 27
Patentable Subject Matter 1. Subject to the pr
ovisions of paragraphs 2 and 3, patents shall be
available for any inventions, whether products or
processes, in all fields of technology, provided
that they are new, involve an inventive step and
are capable of industrial application
2. Members may exclude from patentability
inventions, the prevention within their territory
of the commercial exploitation of which is
necessary to protect ordre public or morality,
including to protect human, animal or plant life
or health or to avoid serious prejudice to the
environment, provided that such exclusion is not
made merely because the exploitation is
prohibited by their law. 3. Members may also excl
ude from patentability (a) diagnostic, t
herapeutic and surgical methods for the treatment
of humans or animals (b) plants and anim
als other than micro-organisms, and essentially
biological processes for the production of
plants or animals other than non- biological and
microbiological processes...
Patent Law and Policy, Fall 2008 Class 3,
Slide 8
9
TRIPs Agreement, Article 27
Patentable Subject Matter 1. Subject to the pr
ovisions of paragraphs 2 and 3, patents shall be
available for any inventions, whether products or
processes, in all fields of technology, provided
that they are new, involve an inventive step and
are capable of industrial application
2. Members may exclude from patentability
inventions, the prevention within their territory
of the commercial exploitation of which is
necessary to protect ordre public or morality,
including to protect human, animal or plant life
or health or to avoid serious prejudice to the
environment, provided that such exclusion is not
made merely because the exploitation is
prohibited by their law. 3. Members may also excl
ude from patentability (a) diagnostic, t
herapeutic and surgical methods for the treatment
of humans or animals (b) plants and anim
als other than micro-organisms, and essentially
biological processes for the production of
plants or animals other than non- biological and
microbiological processes...
Patent Law and Policy, Fall 2008 Class 3,
Slide 9
10
Utility

• 35 U.S.C. 101. Inventions Patentable
• Whoever invents or discovers any new or 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.
• 112. Specification
• The specification shall contain a written
  description of the invention, and of the manner
  and process of making and using it
  

• Operability Can the invention actually
  accomplish the alleged utility?
  
• Beneficial Utility Is it socially harmful?
• Practical or Specific Utility What
  constititutes a substantial utility?

Patent Law and Policy, Fall 2008 Class 3,
Slide 10
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Juicy Whip, Inc. v. Orange Bang, Inc. (1999)

• Claimed Juicy Whips dispenser has a
  reservoir bowl to create the visual impression
  that multiple servings of the dispensed beverage
  are stored within, but the bowl actually
  contains a fluid resistant to organic growth
  and has no fluid connection with the outlet of
  the machine.
• Even if the use is considered deceptive,
  that is not by itself sufficient to render the
  invention unpatentable. The requirement of
  utility in patent law is not a directive to the
  PTO or the courts to serve as arbiters of
  deceptive trade practices. Other agenciesare
  assigned the task of protecting consumers from
  fraud and deception in the sale of food products.

Patent Law and Policy, Fall 2008 Class 3,
Slide 11