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The Subject Matter of Patents II


The Subject Matter of Patents: The Supreme Court's most recent statements ... Is 101 the right place to hang such a concern? 04/08/03. 6. Law 677 | Spring 2003 ... – PowerPoint PPT presentation

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Title: The Subject Matter of Patents II

The Subject Matter of Patents II
  • Class Notes April 8, 2003
  • Law 677 Patent Law Spring 2003
  • Professor Wagner

Todays Agenda
  • The Subject Matter of Patents The Supreme
    Courts most recent statements
  • The Federal Circuits Response

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
  • (Does this make practical sense?)
  • As a matter of statutory construction, is a
    bacterial organism a composition of matter or
  • What does the Court suggest is the real issue
  • So what is the rule of Chakrabarty? (What
    living things are patentable? Which are not?)

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?
  • Cannot patent mathematical formulas in the
  • 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.
  • After Diehr, is software patentable? Business

Statutory Subject Matter
  • The Supreme Courts Approach
  • Two categories of impermissible subject matter
  • Living things
  • What does the court mean by living things?
  • See, e.g., Diamond v Chakrabarty
  • 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

The Federal Circuits Response
  • In re Alappat (Fed Cir. 1994)
  • What is the claimed invention?
  • Is it an algorithm? (A mathematical algorithm?
  • What does the court say about the mathematical
    algorithm exception?
  • Why does the court suggest this claim is
  • Is this consistent with the rule of Diamond v
  • Why do you think the court places weight on the
    machine vs process distinction?
  • The court suggests that software is easily
    patentable on pp 798-99. Do you agree with the
    reasoning? (Again, is this consistent with
  • Consider the Archer dissent after Alappat, can
    you patent music? (How? Any problem with this?)

The Federal Circuits 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 matter
  • The business method exception
  • 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
  • Does the focus on whether the claim does
    something useful suggest anything about the
    scope of the 101 subject matter requirement?

The Federal Circuits Response
  • ATT v Excel (Fed. Cir. 1999)
  • What is the claimed invention? (What is the
    claim format?)
  • Why is this claim not subject to the 101
  • What was the ATT court trying to do in its
    lengthy discussion of the caselaw? (Do you agree
    with its conclusion?)

Overview of Subject Matter Exceptions
  • Two basic categories of exceptions
  • Natural phenomena
  • Living things e.g., natural organisms
  • But see Chakrabarty, allowing non-natural
    (isolated, purified) living organisms to be
  • Laws of nature e.g., Einsteins theory of
  • Basic theory of exclusion lack of novelty,
    concerns about overbreadth
  • Abstract ideas
  • Mathematical algorithms
  • But see ATT/State Street, allowing useful
    algorithms to be patented
  • Basic theory of exclusion concerns about lack of
    utility, overbreadth

Why have Subject Matter Exceptions?
  • Is there an affirmative case for more robust
    subject matter exceptions?
  • Norms-based objections
  • Industry custom (e.g., financial industry)
  • Economic concerns certain technologies are
    better innovated without patents

  • Next Class
  • Patent Economics II
  • Approaches to the Patent System