Intellectual Property Boston College Law School February 12, 2007 Patent - Subject Matter

Historical Background 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 (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 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? –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 –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: –FedEx overnight delivery? –Netflix DVD rental? –New type of corporate financing? –More efficient athletic maneuver?

Administrative Next Assignment –Read into IV.B.3 – Novelty Through “Notes on Inherency Doctrine”