IPSurvey.Fall2009_Overheads.Module3

IPSurvey.Fall2009_Overheads.Module3 - IP Survey Fall 2009 1...

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Unformatted text preview: IP Survey, Fall 2009 1 3- IP Survey Module 3 Patent Law IP Survey, Fall 2009 2 3- The elements of Patentability Patentable subject matter , i.e., patent eligibility Useful/utility (operable and provides a tangible benefit) New (statutory bar, novelty, anticipation) Nonobvious (not readily within the ordinary skills of a competent artisan at the time the invention was made) Specification requirements (enablement, written description, best mode, definiteness) claims Elements of Patentability Apply Invent Issue Exclude Others Expire IP Survey, Fall 2009 3 3- 35 USC §101 Whoever invents or discovers any new and 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 “ Product” claims or inventions IP Survey, Fall 2009 4 3- Diamond v. Chakrabarty, 447 U.S. 303 (1980) Patent application for genetically engineered bacteria It had the property of breaking down multiple components of crude oil Its intended application was to treat oil spills (never field tested or applied) Claim to the bacteria itself: "a bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway." Various other claims in other claim formats Issue – is the bacteria a “manufacture” or “composition of matter” within the meaning of those terms as they apply from 35 U.S.C. §101? OH 3.11.a IP Survey, Fall 2009 5 3- Diamond v. Chakrabarty, 447 U.S. 303 (1980) Mode of analysis (in essence common to all of the patent eligibility cases) First, determine whether the claim is “within” the meaning of one of the four statutory terms Apply statutory interpretation “argument categories” Meaning of the words (statutory definitions, plain meaning, canons of construction, past court opinions on the meaning) Inferences from the provisions or structural characteristics of the statute or other related statutes (same word used in other places in the statute, significance of sectioning, divisions, cross-references, etc.) Legislative History (a number of principles and “canons” are sometimes used to structure use of legislative history; for example, the sometimes employed doctrine that the legislative history should only be authoritative if the statutory language is ambiguous) Policy and/or historical arguments Second, even if the analysis from the first step seems to indicate that the claim is within one of the terms, evaluate whether the claim fits into one of the various remaining exceptions to patent eligibility These exceptions are judicially created, so the mode of analysis looks more like the common law than like statutory interpretation (for example, the line of cases dealing with the now mostly defunct “mathematical algorithm” exception)...
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This note was uploaded on 04/05/2010 for the course LAW LAW6571 taught by Professor Abbott during the Spring '10 term at Florida State College.

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IPSurvey.Fall2009_Overheads.Module3 - IP Survey Fall 2009 1...

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