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Published byRegina Jefferson Modified over 9 years ago
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What is Patentable Subject Matter? Dan L. Burk Chancellor’s Professor of Law University of California, Irvine
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Article 52 EPC The following in particular shall not be regarded as inventions within the meaning of paragraph 1: discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information.
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Section 101 Four Categories “Anything under the sun” Judicial Exceptions Abstract ideas Laws of nature Products of nature Mental steps (?) Printed matter (?)
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Judicial Exceptions No Independent Content Novelty Pre-existing Naturally occurring Inventiveness Pre-1952 cases Utility Judge Moore
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The First Round Gottschalk v. Benson Binary notation Parker v. Flook Alarm limits Diamond v. Chakrabarty Living organisms Diamond v. Diehr Cured rubber process
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The Second Round Bilski v. Kappos Hedging business method Mayo v. Prometheus Diagnostic method AMP v. Myriad DNA sequences Alice Corp. v. CLS Bank Auction business method
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Mayo v. Prometheus Diagnostic/treatment Method Drug metabolism Unclear Basis Law of nature? Abstract idea? Mental steps? Unpatentable Correlations
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AMP v. Myriad Genetics Products of Nature First clear holding gDNA and cDNA Different outcomes Distinguishing Molecules Information? Structure? Future Application
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Alice Corp. v. CLS Bank Business Method Process, system, media Stand or fall together Two-Step Test First, forbidden category? Second, inventive concept The Myriad Puzzle
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The Myriad Puzzle Prometheus Unremarked The Two-step Test cDNA passes gDNA fails First Prong No Inventive concept Entirely conventional
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The “Inventive Concept” Subject Matter Obviousness Without 103 limitations Levels of Abstraction Alice first prong Shades of copyright 101 Claim Interpretation Without construction The “draftsman’s art”
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Thank You Questions Welcome
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