Patent Law and Policy

1
Patent Law and Policy

• University of Oregon Law School
• Fall 2008
• Elizabeth A. Tedesco

Patent Law and Policy, Fall 2008 Class 2,
Slide 1
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Patentable Subject Matter

• 35 U.S.C. 101. Inventions Patentable
• Whoever invents or discovers any new or 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.
• 100. Definitions
• When used in the Patent Act unless the context
  otherwise indicates
• The term invention means invention or
  discovery.
• The term process means process, art or method,
  and includes a new use of a known process,
  machine, manufacture, composition of matter, or
  material

Patent Law and Policy, Fall 2008 Class 2,
Slide 2
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Diamond v. Chakrabarty (1980)

• Claim at issue directed to bacteria
  containingat least two stable energy-generating
  plasmids, each of said plasmids providing a
  separate hydrocarbon degradative pathway.
• Definitions of manufacture and composition
  of matter
• Manufacture the production of articles for use
  from raw or prepared materials by giving to these
  materials new forms, qualities, properties or
  combinations, whether by hand-labor or
  machinery.
• Composition of matter all compositions of two
  or more substances and all composite articles,
  whether they be the result results of chemical
  union, or of mechanical mixture, or whether they
  be gases, fluids, powders or solids.

Patent Law and Policy, Fall 2008 Class 2,
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OReilly v. Morse (1854)

• Claim at issue Eighth. I do not propose to
  limit myself to the specific machinery or parts
  of machinery described in the foregoing
  specification and claims the essence of my
  invention being the use of the motive power of
  the electric or galvanic current, which I call
  electro-magnetism, however developed for marking
  or printing intelligible characters, signs, or
  letters , at any distances, being a new
  applicable of that power of which I claim to be
  the first inventor or discoverer.

Patent Law and Policy, Fall 2008 Class 2,
Slide 4
5
Claiming A Chair With Wheels
Invention
Prior Art
A
A
B
B
B
C
C
C
D
D
E
Smith
Jones
Can the inventor claim
A, B, and C ?
No, anticipated by Smith
A, B, C, and D ?
No, rendered obvious by Smith in view of Jones
A, B, C, D, and E ?
Yes, it is novel and nonobvious!
Patent Law and Policy, Fall 2008 Class 2,
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The Telephone Cases (1888)

• Claim at issue The method of, and apparatus
  for, transmitting vocal or other sounds
  telegraphically, as herein described, by causing
  electrical undulations, similar in form to the
  vibrations of the air accompanying the said vocal
  or other sounds, substantially as set forth.

Patent Law and Policy, Fall 2008 Class 2,
Slide 6
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Morse Claim vs. Telephone Claim

• Morse claim Eighth. I do not propose to
  limit myself to the specific machinery or parts
  of machinery described in the foregoing
  specification and claims the essence of my
  invention being the use of the motive power of
  the electric or galvanic current, which I call
  electro-magnetism, however developed for marking
  or printing intelligible characters, signs, or
  letters , at any distances, being a new
  applicable of that power of which I claim to be
  the first inventor or discoverer.

• Telephone claim The method of, and apparatus
  for, transmitting vocal or other sounds
  telegraphically, as herein described, by causing
  electrical undulations, similar in form to the
  vibrations of the air accompanying the said vocal
  or other sounds, substantially as set forth.

Patent Law and Policy, Fall 2008 Class 2,
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Parke-Davis Co. v. H.K. Mulford Co.

• Claims at issue
• A substance possessing the herein-described
  physiological characteristics and reactions of
  the suprarenal glands in a stable and concentrate
  form, and practically free from inert and
  associated gland-tissue.
• The substance consisting of a salt of the
  herein-described product of the suprarenal
  glands said salt being easily soluble in water
  and possessing the physiological and therapeutic
  characteristics and reactions of said product in
  substantially stable and concentrated form.

• Takamine was the first to make it available for
  any use by removing it from the other
  gland-tissue in which it was found, and, while it
  is of course possible logically to call this a
  purification of principle, it became for every
  practical purpose a new thing commercially and
  therapeutically.

Patent Law and Policy, Fall 2008 Class 2,
Slide 8
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Funk Bros. Seed Co. v. Kalo Inoculant Co.

• Claim at issue An inoculant for leguminous
  plants comprising a plurality of selected
  mutually non-inhibitive strains of different
  species of bacteria of the genus Rhizobium, said
  strains being unaffected by each other in respect
  to their ability to fix nitrogen in the
  lebuminous plant for which they are specific.

• Bond does not create a state of inhibition or
  of non-inhibition in the bacteria. Their
  qualities are the work of nature. Those
  qualities are of course not patentable. For
  patents cannot issue for the discovery of the
  phenomena of natureHe who discovers a hitherto
  unknown phenomenon of nature has no claim to a
  monopoly of it which the law recognizes. If
  there is an invention from such a discovery, it
  must come from the application of the law of
  nature to a new and useful end.

Patent Law and Policy, Fall 2008 Class 2,
Slide 9