1. Patents VII The Subject Matter of Patents Class Notes: March 19, 2003 Law 507 | Intellectual Property | Spring 2003 Professor Wagner

2. 3/19/032Law 507 | Spring 2003 Administrative Issues 1.CP Grading 2.Exam Multiple choice (and true/false) Likely to be about 2 hours (time will be a factor) Open book, open notes (time will be a factor) Past exams: oMean: ~50% oHigh: ~75-80% oLow: ~25% Sample questions / answers will be made available about 1 week prior to exam.

3. 3/19/033Law 507 | Spring 2003 Today’s Agenda 1.Subject Matter Limitations on Patents 2.The Utility Requirement

4. 3/19/034Law 507 | Spring 2003 Review: Requirements for Patentability A valid patent must be... 1.Fully disclosed (§ 112) 2.Novel (§ 102) 3.Not subject to a statutory bar (§ 102) 4.Nonobvious (§ 103) 5.Within the appropriate subject matter (§ 101)

5. 3/19/035Law 507 | Spring 2003 Section 101 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

6. 3/19/036Law 507 | Spring 2003 Section 101 35 U.S.C § 101 - Inventions patentable [1] Subject matter limitations: “process, machine, manufacture, or composition of matter” [2] Utility requirement: “new and useful”

7. 3/19/037Law 507 | Spring 2003 Subject Matter Limitations The Categories of Subject Matter Limitations 1.Products of Nature / Physical Phenomena Living things? 2.Abstract Ideas Business Models? Mathematical Algorithms? Software?

8. 3/19/038Law 507 | Spring 2003 Subject Matter Limits Diamond v Chakrabarty (1980) Claims: [1] process of producing a bacterial organism [2] method of using a bacterial organism [3] the bacterial organism itself Why does the examiner allow [1] and [2] but not [3]? (Does this make practical sense?) As a matter of statutory construction, is a bacterial organism a ‘composition of matter’ or ‘manufacture’? oWhat does the Court suggest is the ‘real’ issue here? So what is the ‘rule’ of Chakrabarty? (What living things are patentable? Which are not?)

9. 3/19/039Law 507 | Spring 2003 Subject Matter Limits Diamond v Chakrabarty (1980) Note the discovery/invention distinction: oWhy limit patentability to only man-made living things? oIf I spend $100M to discover a naturally-occurring product with great social benefits (i.e., the ‘cure for cancer’), haven’t I benefited society? –How is this distinct from spending $100M to ‘invent’ a synthetic product that does the same thing? Parke-Davis (SDNY 1911) Claim: isolated and purified version of material in adrenal glands (‘adrenalin’) How is adrenalin a ‘new thing’ under the patent law?

10. 3/19/0310Law 507 | Spring 2003 Subject Matter Limits Abstract Ideas Gottshalk v Benson (1972) Claim: converting binary-coded decimal numbers to pure binary numbers Again, as a matter of statutory construction, is the claim to a ‘process’? oWhy is this not patentable? (How do you explain this result?) –Concerns about patent scope/breadth –Concerns about novelty –Concerns about ‘practical application’ oAre these valid § 101 concerns? oHow is software patentable after Gottshalk?

11. 3/19/0311Law 507 | Spring 2003 Subject Matter Limits Abstract Ideas State Street Bank (1998) Claim: hub-and-spoke data processing system Why does the Court decide that business methods are patentable? (Is this the right result? Why or why not?) Why is this not a “mathematical algorithm”? Under State Street / AT&T v Excel, what is an unpatentable mathematical algorithm? What is special about a ‘concrete, useful, and tangible result’? (Is this the right line to draw?) What other lines might you draw? (‘technology’ versus ‘information’ / ‘commercial products’ versus ‘ideas’)

12. 3/19/0312Law 507 | Spring 2003 The Utility Requirement Brenner v Manson (1966) Claim: process for manufacturing a chemical compound of unknown benefit Close relatives to the compound were under serious research study as tumor-inhibiting Why does this fail the utility requirement? oDoesn’t the process actually make the compound? Possible analytic frameworks: oUseful = works for intended purpose (Manson’s argument) oUseful = doesn’t harm society (Story suggestion) oUseful = identifiable, specific benefit (Court’s rule) Will the Court’s rule have distinct effects on different technologies? (Is this a problem?)

13. 3/19/0313Law 507 | Spring 2003 The Utility Requirement Assume I claim a chemical compound, and note its specific utility as leather-tanning. Can I claim infringement when the compound is used to cure cancer? (Is this the right result?) Can someone claim a process for treating cancer using my (patented) compound? (What happens then? Who can use the treatment process?) Note the distinction here concerning derivative works in Copyright. (What is the rule of derivative works?) Why do you think this distinction exists?

14. 3/19/0314Law 507 | Spring 2003 The Utility Requirement Historical forms of utility: General utility: non-frivolous inventions Moral utility: ‘immoral’ inventions disallowed Juicy-Whip v Orange Bang

15. 3/19/0315Law 507 | Spring 2003 The Utility Requirement Bottom line: The utility requirement is not a high threshold (Brenner is atypical)The utility requirement is not a high threshold (Brenner is atypical) The general approach is to require an assertion of ‘specific and substantial utility’ (see 1996 PTO Utility Guidelines):The general approach is to require an assertion of ‘specific and substantial utility’ (see 1996 PTO Utility Guidelines): credible and concrete utility associated with the invention The hurdle is not difficult, but it is there Is this modest ‘screen’ worth the effort?

16. 3/19/0316Law 507 | Spring 2003 Next Class Patents VIII Class Exercise: The Doctrine of Equivalents on Trial