Patent Law and Policy

1. Patent Law and Policy University of Oregon Law School Fall 2008 Elizabeth A. Tedesco Patent Law and Policy, Fall 2009 Class 2, Slide 1

2. 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 2009 Class 2, Slide 2

3. Claim at issue directed to bacteria “containing…at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.” • “The laws of nature, physical phenomena, and abstract ideas have not been held patentable. Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not have patent his celebrated law that E=mc2… Such discoveries are ‘manifestations of nature, free to all men and reserved exclusively to none.” • “[Chakrabarty’s] discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under § 101.” Diamond v. Chakrabarty (1980) Patent Law and Policy, Fall 2009 Class 2, Slide 3

4. 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 application of that power of which I claim to be the first inventor or discoverer.” O’Reilly v. Morse (1854) Patent Law and Policy, Fall 2009 Class 2, Slide 4

5. “And hence it seems that the court at first doubted, whether [Neilson’s] was a patent for any thing more than the discovery that hot air would promote the ignition of fuel better than cold. And if this had been the construction, the court, it appears, would have held this patent to be void; because the discovery of a principle in natural philosophy or physical science, is not patentable.” • “It is the high praise of Professor Morse, that he has been able, by a new combination of known powers, of which electro-magnetism is one, to discover a method by which intelligible marks or signs may be printed at a distance. And for the method or process discovered, he is entitled to a patent. But he has not discovered that the electro-magnetic current, used as motive power, in any other method, with any other combination, will do as well.” • Dissent: “The mere discovery of a new element, or law, or principle of nature, without any valuable application of it to the arts, is not the subject of a patent. But he who takes this new element or power, as yet useless, from the laboratory of the philosopher, and makes it the servant of many; who applies it to the perfecting or a new and useful art, or to the improvement of one already known, is the benefactor to whom the patent law tenders its protection.” O’Reilly v. Morse (1854) Patent Law and Policy, Fall 2009 Class 2, Slide 5

6. 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.” The Telephone Cases (1888) Patent Law and Policy, Fall 2009 Class 2, Slide 6

7. “The patent for the art does not necessarily involve a patent for the particular means employed for using it. Indeed, the mention of any means, in the specification or descriptive portion of the patent, is only necessary to show that the art can be used; for it is only useful arts — arts which may be used to advantage – that can be made the subject of a patent.” • “In the present case the claim is not for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current in a closed circuit into a certain specified condition for that purpose.” The Telephone Cases (1888) Patent Law and Policy, Fall 2009 Class 2, Slide 7

8. 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.” Morse Claim vs. Telephone Claim • 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 2009 Class 2, Slide 8

9. 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.” Parke-Davis & Co. v. H.K. Mulford & Co. • “[E]ven if it were merely an extracted product without change, there is no rule that such products are not patentable. 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 2009 Class 2, Slide 9

10. 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.” Funk Bros. Seed Co. v. Kalo Inoculant Co. • “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 nature…He 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 2009 Class 2, Slide 10

11. Invention Prior Art Claiming A Chair With Wheels 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 2009 Class 2, Slide 11