1. Patentable Subject Matter and Design Patents,Trademarks, and Copyrights David L. Hecht, J.D., M.B.A, B.S.E.E.

2. Patentable Subject Matter

3. Section 101 of Title 35 U.S.C. sets out the subject matter that can be patented: 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.

4. What can be claimed? - New products – of course! - Don’t forget methods Methods of making Methods of using Methods of doing business - Don’t forget intermediates and components of products

5. An example -- E-Harmony Patent (issued May 11, 2004) 1.A method to be performed by a computer for operating a matching service, comprising: generating, from empirical data, a number of factors corresponding to a like number of functions of one or more variables relevant to relationship satisfaction; approximating the satisfaction that a user of the matching service has in the relationships that the user forms with others; identifying, with the computer, candidates for a relationship with the user by determining an association between the approximated satisfaction and one or more of the factors; and approximating the satisfaction that the user will have in a relationship with a particular candidate.

6. Interesting Case Association for Molecular Pathology and ACLU v. USPTO and Myriad (S.D.N.Y. 2010) The district court for the Southern District of New York has held that Myriad's patents claiming "isolated DNA" do not qualify as patentable subject matter under 35 USC 101

7. Rationale? Judge Sweet held that because the claimed comparisons of DNA sequences are abstract mental processes, they also constitute unpatentable subject matter under Section 101.

8. Can you patent an organism? Diamond v. Chakrabarty, 447 U.S. 303 (1980) A Genetic engineer developed a bacterium capable of breaking down crude oil, which he proposed to use in treating oil spills. “A live, human-made micro-organism is patentable subject matter under [Title 35 U.S.C.] 101. Respondent's micro-organism constitutes a ‘manufacture’ or ‘composition of matter’ within that statute.

9. Software and business method patents – current news Useful, concrete, and tangible results used to be the threshold for patentability (see State Street Bank v. Signature Financial Group). Federal Circuit opinion in In re Bilski held that the "useful, concrete, and tangible" test for patent-eligibility is incorrect. Instead, the Federal Circuit and the new USPTO guidelines use a Machine-or-Transformation Test to determine patentability for processes.

10. Design patents, trademarks and copyrights

11. Design Patents Scope of design patent coverage is more narrow than a utility patent BUT, wide variety of things may be the subject of design patent

12. Design of a Sneaker

13. Design Patents Cheap, quick, effective narrow scope of protection Underused in most cases Overlooked in “non-design” industries

14. Trademarks A distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.

15. Trademark Enforcement Trademark owner may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark Registration of the mark at the USPTO is not required - But unregistered marks may be protectable only within the geographical area within which it has been used or reasonably expected to expand into

16. Copyright Set of exclusive rights granted to the author or creator of an original work –includes the right to copy, distribute and adapt the work. Can be licensed, transferred and/or assigned Protects books, maps, charts, engravings, prints, musical compositions, dramatic works, photographs, paintings, drawings, sculptures, motion pictures, computer programs, sound recordings, dance and architectural works. Copyright law is typically designed to protect the fixed expression or manifestation of an idea rather than the fundamental idea itself.