Patent Subject Matter Outline

09. Patent: Subject Matter

MML 156-68 [skim], 275-95, 297-98 [note 6], 304-12, 313-16; 35 U.S.C. § 101

Factors Bearing on Patent Protection

• Patent incentive v competition and idea dissemination

  • Other inventive that encourage innovation: trade secrets, market structures, government grant (esp. researches)

• Importance of protection to the industry

• Other incentives to invent despite patent protection

• Cost of research and development

• Intent of inventor

  • People often invent things accidentally (e.g. post-it notes, pacemaker) should we still give them reward?

• Reward idea or its commercialization?

  • Selling it and inventing it same or different rights

• Simultaneous development

  • Telephone, Steamboats two patent filed in the same period

• Ease of copying

  • 3D printing how easy to copy?

• Product cycle

  • Some areas turn very quickly, e.g. software, so patent protection doesn’t last long

• Cumulative or independent nature of innovation

• Importance of disclosure

Requirements for Patentability P.161

Patent and Trademark Office (PTO) reviews each patent application on 5 requirements:

• Patentable Subject matter s.101

  1. one of four statutory categories; or

     1. process

     2. machine

     3. manufacture

     4. composition of matter

  2. improvement thereof

     • not excluded by judicial doctrines barring patents on law of nature, natural phenomena and abstract ideas

1. Utility s.101

   • Invention must be useful in 2 aspects:

     1. credible utility: must work for its intended purpose

     2. specific and substantial utility: must serve a particular practical purpose

   • even if the invention works only in an experimental setting + has no proven use in the field or factory

   • Would only deny patent when an invention has absolutely no practical utility

     • Exception: invention pertaining to life sciences, whether laboratory promise is enough to establish utility in treating human patients

2. Novelty s.102

   • invention has not been preceded in identical form in the public prior art

   • evaluated based on technical rules aimed at determining whether the claimed invention was in the prior art

   • For application filed prior to March 16, 2013, US patent favors the first applicant to invent, so long as the invention was timely filed

   • For application filed after March 16, 2013, US patent favors first applicant to have filed, subject to a grace period for prior publication

3. Nonobvious s.103 [most important]

   • Non-trivial extension: whether an invention is a big enough technical advance over the prior art (no patent if merely trivial step, even if invention is new and useful)

   • Attempt to measure technical accomplishment reflected in an invention

4. Disclosure s.112

   • (1) written description of the invention: demonstrated possession as of the time of filing the application;

   • (2) enablement: specification enable a person having ordinary skill in the art to make and use the invention

   • Ensures that the patentee has fulfilled the social bargain underlying the patent agent – the skilled in the art of the invention can be read and understand the inventor’s contribution; after patent expire, they will be able to make and use the invention themselves

Rights conferred by a Patent

• Claims define the boundaries of the property right that the patent confers

  • Dependent Claim: incorporates all the limitations of the independent claim on which it depends (c.f. Independent Claims)

  • Come at the end of the written description of the invention (most also have drawings)

• Specification describes the invention:

  • name all parts or components of the invention,

  • describe how they work,

  • illustrate how they work together to perform the invention’s function

  • state the precise legal definition of the invention (at the end)

• A patent confers right to exclude others from making, using, selling, offering for sell, or importing the claimed invention for 20 years from the filing of the patent application

  • patent does not automatically grant an affirmative right to do anything

  • patented invention may itself be covered by a preexisting patent blocking patents:

    • holder of an improvement patent has right to exclude everyone from her improvement, including the holder of the board patent; but

    • improved patent holder is barred from use of the improvement unless the broad patent holder authorises such use

Development history

• 1980s divergent amongst different courts 1982 designated court

• Supreme court take case when there is an important issue/ federal circuit court did something significantly wrong

• 1994: WTO requirement to enact more patent protection

Theories of Patent Law P.167

• Inventions are public goods that are costly to make and that are difficult to control once they are released into the world

• Patent protection (economic benefits) gives inventors incentive to invest in creating, developing and marketing new products

• Utilitarianism Patent Theory

  • Maximizing innovation:

    • Balance incentive to innovate against

    • Use of innovation and follow-up innovation

  • Therefore,

    • Giving innovators incentive

      • to invent while balancing this against the cost to the public of not being able to use that invention feely and to innovators who want to build on that earlier innovation.

    • Disclose new inventions

• Patent gives inventor the right to sue those who ‘steal’ his invention + those who reverse engineer it + those who develop the same invention independently

Patent Format

• Content:

  • Inventor: always individual(s) (not the company, even if it would own the rights)

  • Assignee,

  • Title,

  • Abstract,

  • Patent examiner and lawyer,

  • Classification of industry/ field,

  • ‘Prior art’ - related/ relevant patents, drawing, specification

    • Previously submitted models of invention when filing for a patent now only drawing

  • Specification

  • Claims: list of necessary elements that constitute the invention

    • Very technical format

    • E.g. cheese slicer (1) rotating handle at end of bar + (2) u-shaped bar + (3) base with passageway + (4) cutting element attached to bar

    • Own everything you claim but ONLY what you claimed

    • Patent holders would want to claim as broadly as they can

    • E.g. claiming a laser:

      • A laser comprising a chamber having end reflective parallel members and side members, a negative temperature medium disposed within said chamber, and means arranged about the said chamber for pumping said medium, said side members being transparent to the pumping energy and transparent to or absorptive of other energy radiated thereat Means and function (look to specification)

Patent Life Cycle

• Patent Prosecution: Process of obtaining a patent from the Patent Office

  • US Patent Application submit to pattern office to examine the merit of patentability, ~18 hours) Applicant and Patent office would communicate to amend/ argue

  • Basics of filing an application:

    • (1) specification (including a summary of the invention and drawings);

    • (2) one or more claims;

    • (3) oath (declaring inventor actually invented);

    • (4) filing fees

  • Average application takes ~3-4 years; fast track ~14 months if pay an additional fee

  • Notice of Allowance/ abandoned

• Once patent issues, patent owner can enforce the patent in federal court. Forms of litigation:

  1. Post-grant review proceeding

  2. Declaratory relief action

  3. Section 334 investigation

• 18 months from application: Official Gazette (Publication)

Patent Institution

• US Department of Commerce: patent trial and appeal board (PTAB)

• If Patent Application refused by PTAB

  • Appeal to Federal Circuit

  • (or if more fact-based) Appeal to the District Court (Eastern District of Virginia

    • Then appeal to Federal Circuit Supreme Court

Patent Subject Matter P.275-295

• § 101 protects “any” “process, machine, manufacture, or composition of matter” or “improvement thereof… subject to the conditions and requirements of this title”

  • § 101 categories:

    1. Process

    2. Machine

    3. Manufacturer

    4. Composition of matter

    5. Improvements of the above

  • Applies to inventions and discoveries

• Not patentable (from case law):

  1. Natural Phenomena/ Product of Nature (Funk Brothers/Myriad),

     • No moral considerations in determining patentable subject matter (Chakrabarty).

  2. Laws of Nature (Mayo)

  3. Abstract Ideas (Bilski/Flook)

  • But the application of these things can be patentable

• Policy

  1. Over-Breadth:

     • Attempt to claim phenomenon to foreclose further exploitation in the field – monopolize upstream research or natural principal (Funk Brothers/Morse)

     • If too patents are too broad patentee can dominate everyone else, preventing from others to invent

  2. Claiming too high on the pyramid

     • Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." (Gottschalk v. Benson).

     • And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it (Mayo)

  3. Anti-Backsliding – Natural properties, etc. are part of the art, can’t remove from public use (Cruciferous Sprout)

  4. Artificial Limitation – Limiting application to a field doesn’t create eligible subject matter (Bilski/Flook)

Evolution of patentable subject matter limitations:

• Early IP law followed English statutes and traditions New technology age Emergence of eligibility skepticism rise of Federal Circuit and dismantling of patentable subject matter limitation

• Funk Brothers Seeds v Kalo Inoculant Co:

  • Newly discovered scientific principles are unpatentable and require inventive application of such principles. Rule against patenting old matters – already exists

  • Facts: The patentee discovered that there are strains of each species of root nodule bacteria which do not exert a mutually inhibitive effect on each other. Thus, he was able to provide a mixed culture of Rhizobia capable of providing nitrogen fixation for plants belonging to several groups. Kalo exploited the claimed invention by selling multi-purpose packages containing a mixture of different species of Rhizobia suitable for different plants.

  • Holding: The properties of inhibition or of noninhibition in the bacteria were “the work of nature” therefore not subject to being patented no patent for the discovery of the phenomena of nature.

• Diamond v Chakrabarty Living organisms are patentable.

  • P artificially created an oil-eating bacterium to clean up oil spills, His third claim was for the bacterium itself. PTO rejected this as it was living matter.

  • Supreme Court held:

    • Despite a living thing (and you cannot patent life), Bacteria could technically meet the definition of a composition of matter as his claim is “not to a hitherto unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter. His discovery is not nature's handiwork, but his own hence patentable subject matter under 35 U.S.C. §101.”

    • Congress have broad categories + ‘any’ under s.101 legislative history “Anything under the sun made by man is patentable” Patent system should be read broadly (allow things to be presumed to be patentable)

    • Not a product of nature

    • Policy risks on patenting life not court’s job, but the Congress’

      • Court is not stepping into the moral argument on patenting of life as it is left to Congress

    • To encompass new fields that Congress didn't specifically foresee the “fact that genetic technology was unforeseen when Congress enacted s.101 require the conclusion that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection.”

    • Congress will not go back and keep revising patent law to meet new technology. Courts should have leeway to decide these new matters, rather then way for Congress because otherwise patent law will fall behind the times.

• Parke Davis v. H.K. Mulford & Co

  • Held: Purified form of naturally created adrenaline is patentable because:

    • it requires human intervention (not product of nature/ doesn’t exist in nature)

    • the purified form has...

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