Intellectual Property

1
Intellectual Property

• Boston College Law School
• February 15, 2008
• Patent - Subject Matter

2
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

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Requirements

• (1) Patentable Subject Matter
• (2) Novelty
• (3) Utility
• (4) Nonobviousness
• (5) Enablement

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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

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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

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Sample Patent
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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

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Subject Matter

• 35 U.S.C. 101
• any process, machine, manufacture,
  composition of matter, or improvement thereof.

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Diamond v. Chakrabarty

• Three claims
• Process for producing bacterium
• Combination of bacterium carrier
• Bacterium itself

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Subject Matter

• Not patentable subject matter
• Laws of nature
• Physical phenomena
• Abstract ideas
• Printed matter
• Formerly not patentable now patentable
• Software
• Business methods

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State Street Bank v. Signature
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 .
Pooled Mutual Fund
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Business Method Patents?

• Should business methods be patentable?
• Some hypotheticals
• FedEx overnight delivery?
• Netflix DVD rental?
• New type of tax shelter?
• More efficient athletic maneuver?

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Administrative

• Next Assignment
• Read into IV.B.3 Enablement
• Through Incandescent Lamp Patent