martone.doc - II PATENTABLE SUBJECT MATTER A Section 101...

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II. PATENTABLE SUBJECT MATTERA. Section 101: Whoever invents or discovers a new and useful1. process,2. machine,3. composition of matter, OR4. any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.B. Issue: How much intell. propl should someone be allowed to own?1. Fairness dictates that one should not get more than one deserves.2. Interests Involved:a. Patentee -- wants broadest possible claimb. Potential Infringer -- wants notice as to what boundaries are.c. Society as a whole -- wants to encourage invention but not give away the store.C. SCOPE OF PATENTABLE SUBJECT MATTER1. Rule (In re. Bergy): Cannot patent:a.principles or laws of natureb.mental processesc.intellectual concepts, ideasd.natural phenomenae.mathematical formulaef.methods of calculationg.fundamental truthsh.original causes, motivesi.computer-implementable method claims of BensonBut, In re Bergyheld that living microorganisms were within the terms "manufacture" and "composition of matter" in Sec. 101, and were "more akin to inanimate chemical compositions such as reactants, reagents, and catalysts than they are to horses and roses."2. O'Reilly v. Morse a. Process claim held too broad. Morse attempted exclusive right to every improvement where the motive power is electricity and the result is the printing of characters at a distance.D. PATENTABILITY OF NATURAL PHENOMENA1. RULE - Cannot patent the discovery of natural phenomena. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. (Funk Bros, v. Kalo, p. 122)2. Bacteria-- Diamond v. Chakrabarty(p.113) ·Ct. held patentable live, human-made microorganism.
·Rationale: Patent produced a new bacterium w/ different characteristics from any found in nature and have potential for utility (bacteria eat oil spills); not nature's handiwork, but produced byhuman intervention.·Is this manufacture or composition of matter for 101 purposes? Bacterial were not included in the plant patent act; but no evidence that Congress addressed issue at all.Note: Decided in 1980, beginning of pro-patent era. Also, degree of human interventiongreater here, than in Funk Bros.3. Plantsa. Funk Bros.(1948, p.122)Facts: Noninhibitive strains of 6 Rhizobium bacterial were found and combined to create a more effective legume fertilizer.Held: majority concerned that this was just the discovery of a work of nature; mere packaging together of the discovered noninhibitive strains did not satisfy req'ts of invention or discovery; the use of the strains in combination did not improve in any way their natural functioning.Frankfurter concurrence: thought claims were too broad since didn't identify strains individually but only described them in terms of their compatibility; Also thought that "works of nature" is a bad test, since too vague.

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