Jody Blanke, Professor Computer Information Systems and Law 1

Patent Law Article I, Section 8 of the Constitution To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries 2

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Protection Patents protect the underlying idea whereas copyrights protect only an expression (of an idea) e.g., Thomas Edison v. Joe Schmoe Patents last for 20 years (from date of filing) Patents protect from independent creation copyrights do not U.S. used to protect first to invent, not first to file This changed on March 16,

§ 101 Subject Matter Invention must be new and useful process machine manufacture, or composition of matter Can include “anything under the sun that is made by man.” Cannot include laws of nature, scientific principles, mathematical formulas 8

§ 102 Novelty Cannot get a patent if the inventor did not himself invent the subject matter the invention was known or used by others in the U.S. or patented or described in a printed publication anywhere, or the invention was in public use or on sale in the U.S. more than one year prior to filing 9

§ 103 Nonobviousness The differences between the invention and the prior art must not have been obvious at the time of invention to a person having ordinary skill in the art Example - cable ties 10

Sword or Shield Patents can be used offensively or defensively may be held like a trump card e.g., Amazon v. Barnes & Noble Patent holders may get greedy e.g., Compton’s Media, British Telecom 11

Opening of the Floodgates Software patents Diamond v. Diehr (1981) Business method patents State Street Bank & Trust (1998) 12

Mayo Collaborative Services v. Prometheus Laboratories (2012) “ The Court has long held that this provision contains an important implicit exception. ‘[L]aws of nature, natural phenomena, and abstract ideas’ are not patentable.” "Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." “The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” 13

Mayo Collaborative Services v. Prometheus Laboratories (2012) “Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” “We find that the process claims at issue here do not satisfy these conditions. In particular, the steps in the claimed pro-cesses (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously en-gaged in by researchers in the field.” 14

Mayo Collaborative Services v. Prometheus Laboratories (2012) Diamond v. Diehr (1981) Method for molding raw, uncured rubber in various cured, molded products Used Arrhenius’s equation Parker v. Flook (1978) Method for adjusting “alarm limits” in the catalytic conversion of hydrocarbons No “post solution activity” Gottschalk v. Benson (1972) Method for converting binary coded decimal numerals into pure binary numbers on a computer 15

Association for Molecular Pathology v. Myriad Genetics (2013) “This case involves claims from three of them and requires us to resolve whether a naturally occurring segment of deoxyribonucleic acid (DNA) is patent eligible under 35 U. S. C. §101 by virtue of its isolation from the rest of the human genome.” “For the reasons that follow, we hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.” 16

Association for Molecular Pathology v. Myriad Genetics (2013) “Myriad’s patents would, if valid, give it the exclusive right to isolate an individual’s BRCA1 and BRCA2 genes (or any strand of 15 or more nucleotides within the genes)by breaking the covalent bonds that connect the DNA to the rest of the individual’s genome. The patents would also give Myriad the exclusive right to synthetically create BRCA cDNA.” “As we have recognized before, patent protection strikes a delicate balance between creating ‘incentives that lead to creation, invention, and discovery’ and ‘imped[ing] the flow of information that might permit, indeed spur, invention.’” 17

Association for Molecular Pathology v. Myriad Genetics (2013) “We must apply this well-established standard to determine whether Myriad’s patents claim any ‘new and useful... Composition of matter,’ §101, or instead claim naturally occurring phenomena.” “In this case, by contrast, Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.” “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.” “We merely hold that genes and the information they encode are not patent eligible under §101 simply because they have been isolated from the surrounding genetic material.” 18