Chapter 2

Chakrabarty: Questions 1. Why are “discovered” things not patentable? 2. Why are newly discovered laws of nature not patentable? 3. Why isn’t Chakrabarty’s invention just a newly discovered law of nature? 4. Why don’t the Plant Patent Act and the PVPA show that Congress assumed living things to be unpatentable? 5. Why is this decision so important if Chakrabarty could have obtained process claims anyway? 6. Would a cloned human be patentable under this decision? How broad is this holding?

Morse and the Telephone Cases: Questions 1. Why was Morse’s claim held invalid and Bell’s sustained? 2. If Morse had been the first to discover that electricity could be used, in the abstract, to transmit information at a distance, would his eighth claim have survived judicial scrutiny? 3. Could Bell have patented “the transmission of vocal sounds with electricity”?

Parke-Davis: Questions 1. What was the difference between the two patents issued to Takamine? 2. Why weren’t both compositions held to be naturally occurring substances? 3. Based on Parke-Davis, could the discoverer of a medicinal plant in the Amazon patent its extract? 4. Does Parke-Davis allow companies to patent my genes?

Funk Brothers: Questions 1. How is this case distinguished from Chakrabarty and Parke-Davis? 2. Given the state of telegraphy by the time of Bell’s patent application, could his claim for a “method of... transmitting vocal or other sounds... by causing electrical undulations” survived the Funk Bros. test? Isn’t the modulation of electricity to transmit information a “principle of nature?” 3. Does it make sense to treat principles of nature as prior art (as opposed to actual products of nature)? 4. What is the difference between a product of nature and a principle of nature?

Special Statutes for Plants 1. PPA piggy-backs on the patent statute. Three major differences: –Scaled down enablement. –Single claim. –Asexual reproduction of the plant – i.e., independent “invention” is not barred. 2. PPA now does allow patents for things found in cultivated fields. 3. PVPA is much different and is administered by the Dept. of Agriculture. 4. J.E.M. Ag Supply allows overlapping protection of utility patents and PVPA rights.

Benson and Software Patents In 1972, the S Ct invalidated a patent claiming an algorithm for transforming binary numbers into binary coded decimal. The reasoning in the opinion is highly unclear. Charitably construed, the opinion invalidated the patent because it viewed the algorithm itself as an “abstract idea.” Both claims invalidated in Benson were process claims. Many attorneys avoided such claims and instead framed process claims as machine claims.

Diamond v. Diehr Diehr was the end of a line of cases in which the Supreme Court invalided patents under § 101. In fact, the Court took no cases on the meaning of § 101 for 20 years after Diehr until J.E.M. AG Supply, in which it also upheld the patents at issue. Note that the dissent in this case — which four Justices joined! — would have precluded all patenting of software. The Federal Circuit was established shortly after the Court decided Diehr. The Federal Circuit has relied on Diehr and Chakrabarty to build a line of cases that has gradually narrowed the application of Benson’s “abstract ideas” exception to patentable subject matter. Would a computer program that translated languages be patentable under Diehr?

Diamond v. Diehr Would a computer program that translated languages be patentable under Diehr? How restrictive could the patentable subject matter doctrine become if the Supreme Court, in future cases, chose to interpret Diehr narrowly and Benson broadly in the computer field? –The answer is “very restrictive.” While the Federal Circuit’s case law charts a clear path that broadly permits patenting of software, the Supreme Court case law is much more ambiguous. The Court could dramatically restrict patenting of software without overruling any of its precedents.

State Street After State Street, does it matter whether claims for computer programs are phrased as machine claims or process claims? Could an applicant successfully claim an algorithm used only in computer programs, without an application beyond software? What would be unpatentable under State Street?

State Street: Business Methods Elusive origins of the business method “exception.” World view: Split between nations that follow U.S. and those that follow EU approach of no business/finance patents. Congressional response to State Street. Under State Street, would a business method unrelated to a computer program be patentable, for example, a step-by-step approach to sales that proves to increase buyers’ receptivity to offers? Does the congressional creation of a prior user defense violate the TRIPs Article 27 requirement that patent rights be available without discrimination to all fields of technology?

Surgical Methods Medical techniques have a spotty patent history. Morton v. New York Eye Infirmary, 17 F. Cas. 879 (C.C. S.D.N.Y. 1862), is an early example of the courts’ hesitation to permit the patenting medical procedures. Ex parte Scherer, 103 U.S.P.Q. (BNA) 107 Pat. Off. Bd. App. 1954), officially overturned the disfavor given medical procedures in the Patent Office, but the office had granted several medical procedure patents even before Scherer. While medical procedures are still patentable, the ability of the inventor to receive any return on his or her patent has been severely limited. See 18 U.S.C. § 287(c) (2000). What is the value of a surgical procedure patent? Could anyone be successfully sued for damages? What is the reach of TRIPs article 27(3)(a)?

Software Exclusions Why does this case turn on the meaning of “technical character”? Is this a phrase used in the EPC? What constitutes an effect having a “technical character” as defined in this opinion? What is the technical effect produced by IBM’s program? Is this opinion broader than Diehr? Note that, in the end, IBM receives a patent on a “computer program.” Has the EPO interpreted out of existence the EPC’s limitation patenting computer programs? Why does the EPO believe that computer programs such as IBM’s may have technical effects but that business methods such as a new pension system (see note 4 page 194) generally do not? Why aren’t advances in economics, finance and business “technical”?

Other Exclusions List of candidates is long: sports moves, recipes, social inventions, legal/regulatory techniques, artistic styles, etc. Will the US continue to pursue an “anything under the sun” approach to patentability? Will the EU expand the category of things considered to be “technical”? Will there be some compromise position? Will the expansion of patentable subject matter lead to the creation or expansion of other patent law doctrines? For example, could sports moves be excluded from patentability because they produce no net social benefit? (One person’s gain is another’s loss.)