The patent statute states:
“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.”
The elements of patentability are:
- Patentable subject matter
- Utility
- Novelty
- Nonobviousness
- Disclosure
The following are not patentable subject matter:
- Laws of nature
- Mathematical formula
- Physical phenomena
- Abstract ideas
Purification Patents
Can patent process of purifying a natural substance
Activity Method Patents
The machine-or-transformation test (not the exclusive test)
1. it is tied to a particular machine or apparatus OR 2. it transforms a particular article into a different thing
Can you patent a medical diagnostic method?
No.
What type of DNA is patentable?
Complimentary genes (don’t exist in nature)
Patents for computer programs
No
Flook - no mathematical formulas
Yes
In Re Alappat - method to make a machine display smooth lines
Transformational test
- Determine if the patent is directed to one of the inelligible categories
- If it is directed to an ineligible category, is there something more? - what is the inventive concept, is it something more than well understood routine activities in the industry, or conventional steps set out in high level of generality.
To have utility, a patent’s use must be:
- specific (what applications)
- credible (laugh test)
- Moral (no gambling or the like)
- Use beyond frivolity (not mere fashion)
To be novel, a patent must not:
- Be out there in the prior art
- Used by others in the country
- Be described in a printed publication domestic or international
Use in the world occurs when:
- someone uses it for purposes other than testing and the use is not protected by methods to keep it secret
Elements of non-obviousness
- Scope and content of the prior art
- Differentiate between prior art and claims
- Look at the level of ordinary skill in the art
Indicators of non-obviousness
Commercial success
Long-felt need and failure by others
Award and praise
Requirements of disclosure:
- a written description of the invention, and of the manner and process of making and using it,
- in clear terms so as to enable any person skilled in the art to make or use it
Problems that arise when disclosing groups of claims
Narrowing Problem - don’t give the patent user the way to do “it” because just gave too much information
Expansion Problem - gave a specific use, and then wanted it expanded to a larger category (having gene for rat proteins and claiming gene for all mammal proteins)
Undue experimentation doctrine
if it takes too much experimentation to figure out how your invention works, the invention hasn’t been specifically described to be enabled
For literal infringement to occur
Every element within a claim must be contained in an infringing product for it to infringe
Infringing under the doctrine of equivalence
Where an accused product copies 4 (of five) elements of a claim, and varies the fifth element, the accused may still infringe if they have merely used an equivalent “thing” where the fifth element would be
Damages for infringement
1. Injunction
For the life of the patent
2. Damages
Measured by either:
1. Lost profits
2. Reasonable royalties
