Intellectual Property
Boston College Law School
February 15, 2008
Patent - Subject Matter
Historical Background
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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
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(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
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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?
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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
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Laws of nature
Physical phenomena
Abstract ideas
Printed matter
• Formerly not patentable; now patentable
– Software
– Business methods
State Street Bank v. Signature
Pooled
Mutual
Fund
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:
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FedEx overnight delivery?
Netflix DVD rental?
New type of tax shelter?
More efficient athletic
maneuver?
Administrative
• Next Assignment
– Read into IV.B.3 – Enablement
• Through “Incandescent Lamp Patent”