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Evolution of Patent Law: From Venetian Senate to US Legislation

Explore the historical background of patent law, major milestones, requirements, and approval process. Dive into patentable subject matters, utility concepts, and sample patent theories. Discuss State Street Bank v. Signature and debates on business method patents.

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Evolution of Patent Law: From Venetian Senate to US Legislation

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  1. Intellectual Property Boston College Law School February 11, 2009 Patent - Subject Matter, Utility

  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

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

  4. 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

  5. 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

  6. Sample Patent

  7. 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

  8. Subject Matter • 35 U.S.C. § 101 • “any … process, machine, manufacture, … composition of matter, or … improvement thereof.”

  9. Diamond v. Chakrabarty • Three claims • Process for producing bacterium • Combination of bacterium & carrier • Bacterium itself

  10. Subject Matter • Not patentable subject matter • Laws of nature • Physical phenomena • Abstract ideas • Printed matter • Formerly not patentable; now patentable • Software • Business methods

  11. 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

  12. 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?

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

  14. Utility • General Utility • Specific Utility • Moral Utility

  15. Utility?

  16. Utility?

  17. Administrative • Next Assignment • Read into IV.B.4 – Nonobviousness • Through “Combining References”

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