Intellectual Property Boston College Law School February 11, 2009 Patent - Subject Matter, Utility.

Intellectual Property

Boston College Law School

February 11, 2009

Patent - Subject Matter, Utility

Historical Background

• 1474 – Venetian Senate Act• 1500s – English Patent Acts• 1600s – Colonial Patent Acts• 1790 – First U.S. Patent Act• 1863 – Major Revision of Act• 1952 – Current Patent Act

– 1960s – Low water mark for enforcement

– 1982 – Creation of Federal Circuit

Requirements

• (1) Patentable Subject Matter

• (2) Novelty

• (3) Utility

• (4) Nonobviousness

• (5) Enablement

Rights Obtained• Rights

– Prevent others from: • making, using, selling• offering for sale, importing

– Independent invention is not a defense

• Term – 20 years from date of application– Formerly 17 years from issuance

• Approval– Must get approval from U.S. PTO

Approval Process

• File application w/ PTO

• Review by PTO for patentability

• Back and forth between applicant and PTO

• Publication of some patent applications

• Issuance or rejection of patent

• Appeal to review board, CAFC

• Reexamination procedure

Sample Patent

Theories

• Economic theory– Solve basic public goods problem

– Questions re: proper scope and structure• Benefits?

– Incentives for inventive activity

– Disclosure of inventions

• Costs?– Higher prices for consumers

– Restrict other inventors who build on invention

– Licensing costs

– Administrative costs

Subject Matter

• 35 U.S.C. § 101– “any … process, machine, manufacture, …

composition of matter, or … improvement thereof.”

Diamond v. Chakrabarty

• Three claims– Process for producing

bacterium

– Combination of bacterium & carrier

– Bacterium itself

Subject Matter

• Not patentable subject matter– Laws of nature– Physical phenomena– Abstract ideas– Printed matter

• Formerly not patentable; now patentable– Software– Business methods

State Street Bank v. Signature

PooledMutualFund

A data processing system …comprising: (a) a computer processor means for processing data; (b) storage means for storing data …; (c) first means for initializing the storage medium; (d) second means for processing data regarding assets in the portfolio and each of the funds from a previous day and data regarding increases or decreases in each of the funds’ assets and allocating the percentage share that each fund holds in the portfolio; ….

Business Method Patents?

• Should business methods be patentable?

• Some hypotheticals:– FedEx overnight delivery?

– Netflix DVD rental?

– New type of tax shelter?

– More efficient athletic maneuver?

Requirements

• (1) Patentable Subject Matter

• (2) Novelty

• (3) Utility

• (4) Nonobviousness

• (5) Enablement

Utility

• General Utility

• Specific Utility

• Moral Utility

Utility?

Utility?

Administrative

• Next Assignment– Read into IV.B.4 – Nonobviousness

• Through “Combining References”