The Subject Matter of Patents II
Class Notes: April 8, 2003
Law 677 | Patent Law | Spring 2003
Professor Wagner
Today’s Agenda
1. The Subject Matter of Patents: The Supreme
Court’s most recent statements
2. The Federal Circuit’s Response
Law 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’?
o What does the Court suggest is the ‘real’ issue here?
• So what is the ‘rule’ of Chakrabarty? (What living
things are patentable? Which are not?)
Law 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 §
a) After Diehr, is software patentable? Business
Law 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?
Law 677 | Spring 2003
The Federal Circuit’s Response
In re Alappat (Fed Cir. 1994)
• What is the claimed invention?
• Is it an algorithm? (A ‘mathematical algorithm’? )
o What does the court say about the ‘mathematical algorithm
• Why does the court suggest this claim is patentable?
o Is this consistent with the rule of Diamond v Diehr?
o Why do you think the court places weight on the machine vs process
• The court suggests that software is easily patentable on pp 79899. Do you agree with the reasoning? (Again, is this consistent
with Diehr?)
• Consider the Archer dissent: after Alappat, can you patent
music? (How? Any problem with this?)
Law 677 | Spring 2003
The Federal Circuit’s Response
State Street Bank (Fed. Cir. 1998)
• What is the claimed invention?
• What is the claim format? (Is this important?)
• The court considers two “exceptions” to statutory subject
o The ‘business’ method exception
o The ‘mathematical algorithm’ exception
– What is the ‘test’ for this exception? (How does the calculation
of share prices meet that test?)
– How does this differ from the analysis in Alappat? Is it closer -or further -- from Diehr? What does the court say about
o Does the focus on whether the claim does something “useful”
suggest anything about the scope of the § 101 subject matter
Law 677 | Spring 2003
The Federal Circuit’s Response
AT&T v Excel (Fed. Cir. 1999)
• What is the claimed invention? (What is the claim
• Why is this claim not subject to the § 101 exceptions?
• What was the AT&T court trying to do in its lengthy
discussion of the caselaw? (Do you agree with its
Law 677 | Spring 2003
Overview of Subject Matter Exceptions
Two basic categories of exceptions:
1. Natural phenomena
1. Living things: e.g., natural organisms
• But see Chakrabarty, allowing non-natural (isolated,
purified) living organisms to be patented
2. Laws of nature: e.g., Einstein’s theory of relativity
• Basic theory of exclusion: lack of novelty, concerns about
2. Abstract ideas
1. Mathematical algorithms
• But see AT&T/State Street, allowing “useful” algorithms
to be patented
2. Basic theory of exclusion: concerns about lack of utility,
Law 677 | Spring 2003
Why have Subject Matter Exceptions?
Is there an affirmative case for more robust
subject matter exceptions?
1. Norms-based objections
2. Industry custom (e.g., financial industry)
3. Economic concerns: “certain technologies are better
innovated without patents”
Law 677 | Spring 2003
Next Class
Patent Economics II
Approaches to the Patent System
Law 677 | Spring 2003