Subject Matter Flashcards
What is the statutory provision on patentable subject matter?
Section 101: Inventions Patentable: 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.
What are the two groups of Section 101, according to Licthman?
Products and Processes
How long has Section 101 been around?
for over two centuries
What is Section 100?
Defintions: “When used in the [Patent Act] unless the context indicates otherwise:
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material…
What is Diamond v. Chakrabarty about?
Respondent microbiologist filed patent claims for human-made, genetically engineered bacterium that was capable of breaking down multiple components of crude oil. The court affirmed the judgment that allowed respondent’s claims. The court rejected the argument of the patent office board of appeals that 35 U.S.C.S. § 101 was not intended to cover living things such as laboratory created micro-organisms. The court held that respondent’s micro-organism constituted a “manufacture” or a “composition of matter” within the meaning of 35 U.S.C.S. § 101 and thus qualified as patentable subject matter. The court found that respondent had produced a new bacterium with markedly different characteristics from any found in nature and which had the potential for significant utility. The court held that the language of 35 U.S.C.S. § 101 embraced respondent’s invention.
What is the issue in Chakrabarty?
Whether a live, human-made micro-organism is patentable subject matter under 35 U.S.C. $101.
Who is Chakrabarty?
A microbiologist that filed a patent application regarding a microorganism he made that can help with cleaning up oil spills.
What were the three types of claims that Chakrabarty filed?
- Process claims for the method of producing the bacteria
- Claims for an inoculum comprised of a carrier material floating on water, such as straw
- Claims to the bacteria themselves
What was the Patent Office Board’s reason for rejecting Chakrabarty’s third (the relevant one) claim?
That as living things, they are not patentable subject matter under 35 U.S.C. $101
Does the Constitution grant broad or narrow power to legislate to “promote the Progress of Science and useful Arts?
Broad power
What are the three exceptions to patentable subject matter?
- laws of nature
- physical phenomena - products of nature
- abstract ideas - algorithms
Did the court in Chakrabarty consider the mircoorganism to qualify as patentable subject matter? What is the PTO’s line on it?
Yes, it was patentable;
Patent Office: non-naturally occurring, non-human multicellular organisms are patentable subject matter
What was Funk Bro’s about?
Respondent brought a patent infringement claim against petitioner. The infringement claim was limited to respondent’s claim that he provided a mixed culture of Rhizobia capable of inoculating the seeds of plants belonging to several cross-inoculation groups. Petitioner filed a counterclaim asking that the entire patent be adjudged invalid. The United States Supreme Court reversed and found the patent invalid. Respondent’s discovery that certain strains of each species of the bacteria involved could be mixed without harmful effect to the properties of either was a discovery of their qualities of noninhibition. It was not patentable because it was no more than a discovery of the laws of nature. Respondent’s discoveries did not make the bacteria perform in any other way than their natural way. Respondent’s combination of the bacteria was new and useful but lacked the requirements of invention or discovery. Once nature’s secret of the noninhibitive quality of certain strains of the species of Rhizobium was discovered, the state of the art made respondent’s production of a mixed inoculant a simple step.
How does the court in Chakrabarty differentiate it from Funk Bro’s?
The patentee in Chakrabarty has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature’s handiwork, but his own.
What are the two argument’s Diamond provides in Chakrabarty, and the Court’s answers to them?
- The passage of the 1930 Plant Patent Act and 1970 Plant Variety Protection Act (which authorized protection only for asexually and sexually reproduced plants) evidences congressional intent that the terms “manufacture” or “composition of matter” do not include living things. (Court said the Congress had recognized the distinction was not between living and nonliving things, but between products of nature, whether living or not, and human-made inventions..)
- Micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection - resting on the fact that genetic technology was unforeseen when Congress enacted $101. The legislative process is best equipped to weigh the competing economic, social, and scientific considerations involved - relying on Parker v. Flook (“the judiciary must proceed cautiously when…asked to extend patent rights into areas wholly unforeseen by Congress.”) Also, there is a worry that there will be lots of genetic experimentation that will be bad for the human race. (Court says, under Marburry v. Madison, that the Court has the ability to say what the law is once Congress has spoken. Also, Flook did not announce a new principle; such a principle would be against the priniciple of encouraging innovation in patent law. Also, that the patent system will not deter people from doing such experimentation; there are other reasons to do that kind of experimentation.)
What does the dissent in Chakrabarty argue?
- That the Acts stongly evidence a limitation that excludes bacteria from patentability.
What is one reason for reading the broad terms of $101 narrowly?
The Nation’s deep seated antipathy to monopolies. - the dissent in Chakrabarty
What is Myriad about?
Appellees challenged the patentability of certain claims relating to human genetics. The court affirmed the decision to exercise declaratory judgment jurisdiction because at least one plaintiff had standing to challenge the validity of appellant’s patents. Next, it reversed the decision that appellant’s composition claims to “isolated” DNA molecules covered patent-ineligible products of nature under 35 U.S.C.S. § 101 because each of the claimed molecules represented a nonnaturally occurring composition of matter. The court stated that one distinction between products of nature and human-made invention for purposes of § 101 turned on a change in the claimed composition’s identity compared with what existed in nature. The court also reversed the decision that appellant’s method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells was directed to a patent-ineligible scientific principle. It affirmed the decision, however, that appellant’s method claims directed to “comparing” or “analyzing” DNA sequences were patent ineligible; such claims included no transformative steps and covered only patent-ineligible abstract, mental steps.
What were the three issues in Myriad and how did the Court come out on each of them?
- Whether the claims to “isolated” DNA molecules covered patent ineligible products of nature under 35 USCS $101. (No, the DNA molecules were patent eligible because each of the claimed molecules represented a nonnaturally occurring composition of matter. The court stated that one distinction between products of nature and human-made invention for purposes of § 101 turned on a change in the claimed composition’s identity compared with what existed in nature.)
- Whether method claims directed to “comparing” and “analyzing” DNA sequences were patent ineligible (Yes, the method claims were patent ineligible because such claims included no transformative steps and covered only patent-ineligible abstract, mental steps.)
- Whether the method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells was directed to a patent-ineligible scientific principle. (No, the method claim was patent eligible because claim 20 applies certain steps to transformed cells that are a product of man, not of nature.)
What court was Chakrabarty in?
US Supreme Court
What court was Myriad in?
United States Court of Appeals for the Federal Circuit
What court was Funk Bro’s in?
US Supreme Court
What is the dissent’s argument in Myriad?
The majority characterizes the isolated genes as new molecules and considers them different substances from the
corresponding native DNA. 2 Because the native BRCA genes are chemically bonded to other [*129] genes and histone proteins, the majority concludes that cleaving those bonds to isolate the BRCA genes turns the isolated genes into “different materials.” Yet there is no magic to a chemical bond that requires us to recognize a new product when a chemical bond is created or broken, but not when other atomic or molecular forces are altered.
What is the weird thing about Myriad’s summary of Chakrabarty?
It sounds a lot like Funk Bro’s. 4 plasmids in a microorganism vs. 3 things in a bottle.
Extra:
What if you put it in 4 different microorganisms in a solution instead? Would that make it less patentable? Is it less innovative? But he wasn’t the first to put stuff in a new microorganism… not that innovative.
What about the dissent’s kidney example in Myriad? What could the majority have said in response (but didn’t)?
It’s bad. They might have said that it’s the same as it was when it was in the body, but they didn’t. They said, it’s not a composition of matter.
Could have said, when you take the kidney out, it’s the same as it was in the body
What was Park Davis?
Learned Hand case about purification of adrenaline being good enough b/c it has an awesome utility.
Is a genetically altered organism a manufacture or a composition of matter? What case is this?
Both, but it doesn’t really make much of a difference; Diamond v. Chakrabarty
How did Chakrabarty define “composition of matter”?
“composition of matter” includes “all compositions of two or more substances and … all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”
How do blocking/improvement patents work? Must you get permission from both inventors?
Yes; also, the second inventor must license what he improved on in order to use it
Does a patent holder have the exclusive right to to make, use, sell, offer, and import his/her invention?
No; he/she has the right to exclude others from doing those things
Which courts are involved in patents?
- District Courts
- Federal Circuit
- Supreme Court
What does the ITC look at?
When people are importing things wrongly
What are the upsides and downsides of going to the ITC?
Up: they’re fast, and they’re experts
Down: they can only ban importation (can craft interesting injunctions or award damages)
What happened to Kodak?
it has a ton of patents; it decided to fight Apple; chose one patent in one court (ITC), which is a strategic mistake
