Patent Law

The invention must consist of a USEFUL:

• Process
• Machine
• Article of manufacture
• Composition of matter
• Improvement of any of the above. See, 35 U.S.C. §101. ...hide

The invention must be something that has not been publicly known. Anything patented, sold, published or publicly known is considered "prior art". See, 35 U.S.C. §102.

For example, steering wheels are prior art, but one can try to patent a novel improvement to a steering wheel, such as a hand pressure sensing system.   ...hide

Also referred to as the "inventive step", patentability requires that an invention not be an obvious derivative from the prior art. See, 35 U.S.C. §103.

To determine obviousness U.S. courts apply, inter-alia, the test outlined in Graham v. John Deere Co., 383 U.S. 1 (1966). The factors of the test are:

• Elements already existing in the prior art
• The ordinary skills of someone versed in the art
• Differences between the new invention and the original art
• Objective evidence of non-obviousness

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The inventor must describe the invention with sufficient detail to allow someone skilled in the art to make and use the invention. See, 35 U.S.C. §112(a).

The requirement prevents an eternal monopoly for the inventor by ensuring that others are enabled to replicate the invention once the patent protection expires. See generally, MPEP §2164.   ...hide

This is closely related to 'enablement'. The Code, at 35 U.S.C. §112(b). requires that, "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention."   ...hide

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014) is the last in a line of cases setting eligibility boundaries on software implementation of business methods and abstract ideas. The Supreme Court unanimously ruled to invalidate the patent.

In one of the areas touched on, the court stated, "There is no dispute that ... many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art," ... thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable...” . (slip op., at 14)    ...hide

Naturally occurring DNA is not patentable, even if the sequence is newly located and isolated from the chromosome. Myriad Genetics had found, isolated and patented the sequences for the BRCA1 and BRCA2 genes. The sequences were employed in a breast cancer screening test.

The Supreme Court held that naturally occurring genetic sequences were not patent eligible. Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013). However, the court drew a clear distinction between natural and synthetically produced cDNA that is chemically distinct from the naturally occurring type.    ...hide

A business method was held as not patent eligible in the landmark case of Bilski v. Kappos, 561 U. S. 593 (2010).

The case is notable for the Supreme Court's rejection of the "machine or transformation test" as the sole determinant of patent eligibility for a process. As in Alice v. CLS Bank, some of the justices joined in concurring opinions indicating that no business method could be patent eligible.    ...hide

Two cases fall in this category. The first case concerned a patent on a medical blood test given to determine the proper dosage for a drug. The test manufacturer, Prometheus Laboratories, a patent licensee, sued Mayo Collaborative Svcs. after Mayo began to make and use its own diagnostic kit. The district court invalidated the patent. The Federal Circuit reversed the district court. Mayo appealed to the Supreme Court, which remanded the case. The Federal circuit again upheld the patent. Mayo appealed the second ruling to the Supreme Court. The Supreme Court reversed, finding the test process only utilized "natural laws" and was therefore ineligible for patent protection. Mayo Collaborative Svcs. v. Prometheus Laboratories Inc., 566 U.S. 66 (2012).

The second biotech case involved a genetically engineered man-made bacteria. The bacteria was able to break down components of crude oil. It was ruled patent eligible, even though the patent was for a live organism. That was the holding in Diamond v Chakrabarty, 447 U.S. 303 (1980).    ...hide