1. The Subject Matter of Patents I Class Notes: April 3, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

2. 04/03/032Law 677 | Spring 2003 Today’s Agenda 1.The Utility Requirement 2.The Subject Matter of Patents: The Supreme Court

3. 04/03/033Law 677 | 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)

4. 04/03/034Law 677 | 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

5. 04/03/035Law 677 | Spring 2003 Section 101 35 U.S.C § 101 - Inventions patentable [1] Utility requirement: “new and useful” [2] Subject matter limitations: “process, machine, manufacture, or composition of matter

6. 04/03/036Law 677 | 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?)

7. 04/03/037Law 677 | Spring 2003 The Utility Requirement In re Brana (1995) How does Brana alter the Brenner analysis? Is the burden-shifting approach better? (Why or why not?) Why type of evidence is relevant? oReferences casting doubt on the technology? oGeneral industry practice in testing compounds? Why require utility at all? (Does even this low- level screen have any benefits?)

8. 04/03/038Law 677 | Spring 2003 The Utility Requirement A Note on Moral Utility Juicy-Whip v Orange Bang (1999) Is there any use or need for moral utility today?

9. 04/03/039Law 677 | Spring 2003 Statutory Subject Matter Gottshalk v Benson (1972) Claim: converting binary-coded decimal numbers to pure binary numbers 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? Why does the court focus on the “transformation to a different state or thing” oDoes Benson effectively preclude software patents?

10. 04/03/0310Law 677 | Spring 2003 Statutory Subject Matter Parker v Flook (1978) Claim: method for updating alarm limits Again, what is the court’s concern which this claim? Overbroad? An attempt to patent a ‘principle’ rather than a process? (Why per se disallow patenting of principles? Is this really a § 101 issue?)

11. 04/03/0311Law 677 | Spring 2003 Statutory Subject Matter 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?)

12. 04/03/0312Law 677 | Spring 2003 Statutory Subject Matter Diamond v Diehr (1981) Claim: process for curing synthetic rubber (includes the use of a formula) What is the ‘rule’ of Diehr? a)Cannot patent mathematical formulas ‘in the abstract”? b)“When a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws are designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.” a)After Diehr, is software patentable? Business models?

13. 04/03/0313Law 677 | Spring 2003 Statutory Subject Matter The Supreme Court’s Approach Two categories of impermissible subject matter: 1.Living things What does the court mean by ‘living things’? See, e.g., Diamond v Chakrabarty 2.Abstract ideas What does the court mean by ‘abstract ideas’? See, e.g., Diamond v Diehr What, if anything, do these categories have in common? Is § 101 the right place to hang such a concern?

14. 04/03/0314Law 677 | Spring 2003 Next Class The Subject Matter of Patents I