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Jody Blanke, Professor
Computer Information Systems and Law
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Patent Law
 Article I, Section 8 of the Constitution
 To promote the progress of science and useful arts, by
securing for limited times to authors and inventors the
exclusive right to their respective writings and
discoveries
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Protection
 Patents protect the underlying idea
 whereas copyrights protect only an expression (of an
idea)
 e.g., Thomas Edison v. Joe Schmoe
 Patents last for 20 years (from date of filing)
 Patents protect from independent creation
 copyrights do not
 U.S. used to protect first to invent, not first to file
 This changed on March 16, 2013
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§ 101 Subject Matter
 Invention must be new and useful
 process
 machine
 manufacture, or
 composition of matter
 Can include “anything under the
sun that is made by man.”
 Cannot include laws of nature,
scientific principles,
mathematical formulas
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§ 102 Novelty
 Cannot get a patent if
 the inventor did not himself invent the subject matter
 the invention was known or used by others in the U.S. or
patented or described in a printed publication
anywhere, or
 the invention was in public use or on sale in the U.S.
more than one year prior to filing
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§ 103 Nonobviousness
 The differences between the invention and the prior
art must not have been obvious at the time of
invention to a person having ordinary skill in the art
 Example - cable ties
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Sword or Shield
 Patents can be used offensively or
defensively
 may be held like a trump card
 e.g., Amazon v. Barnes & Noble
 Patent holders may get greedy
 e.g., Compton’s Media, British
Telecom
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Opening of the Floodgates
 Software patents
 Diamond v. Diehr (1981)
 Business method patents
 State Street Bank & Trust (1998)
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Mayo Collaborative Services v.
Prometheus Laboratories (2012)
 “The Court has long held that this provision contains an
important implicit exception. ‘[L]aws of nature, natural
phenomena, and abstract ideas’ are not patentable.”
 "Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and
technological work."
 “The Court has recognized, however, that too broad an
interpretation of this exclusionary principle could
eviscerate patent law. For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.”
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Mayo Collaborative Services v.
Prometheus Laboratories (2012)
 “Still, as the Court has also made clear, to transform an
unpatentable law of nature into a patent-eligible
application of such a law, one must do more than simply
state the law of nature while adding the words ‘apply it.’”
 “We find that the process claims at issue here do not satisfy
these conditions. In particular, the steps in the claimed
pro-cesses (apart from the natural laws themselves) involve
well-understood, routine, conventional activity previously
en-gaged in by researchers in the field.”
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Mayo Collaborative Services v.
Prometheus Laboratories (2012)
 Diamond v. Diehr (1981)
 Method for molding raw, uncured rubber in various cured, molded
products
 Used Arrhenius’s equation
 Parker v. Flook (1978)
 Method for adjusting “alarm limits” in the catalytic conversion of
hydrocarbons
 No “post solution activity”
 Gottschalk v. Benson (1972)
 Method for converting binary coded decimal numerals into pure
binary numbers on a computer
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Association for Molecular Pathology v.
Myriad Genetics (2013)
 “This case involves claims from three of them and requires
us to resolve whether a naturally occurring segment of
deoxyribonucleic acid (DNA) is patent eligible under 35 U.
S. C. §101 by virtue of its isolation from the rest of the
human genome.”
 “For the reasons that follow, we hold that a naturally
occurring DNA segment is a product of nature and not
patent eligible merely because it has been isolated, but that
cDNA is patent eligible because it is not naturally
occurring.”
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Association for Molecular Pathology v.
Myriad Genetics (2013)
 “Myriad’s patents would, if valid, give it the exclusive right
to isolate an individual’s BRCA1 and BRCA2 genes (or any
strand of 15 or more nucleotides within the genes)by
breaking the covalent bonds that connect the DNA to the
rest of the individual’s genome. The patents would also give
Myriad the exclusive right to synthetically create BRCA
cDNA.”
 “As we have recognized before, patent protection strikes a
delicate balance between creating ‘incentives that lead to
creation, invention, and discovery’ and ‘imped[ing] the
flow of information that might permit, indeed spur,
invention.’”
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Association for Molecular Pathology v.
Myriad Genetics (2013)
 “We must apply this well-established standard to determine
whether Myriad’s patents claim any ‘new and useful . . .
Composition of matter,’ §101, or instead claim naturally occurring
phenomena.”
 “In this case, by contrast, Myriad did not create anything. To be
sure, it found an important and useful gene, but separating that
gene from its surrounding genetic material is not an act of
invention.”
 “Groundbreaking, innovative, or even brilliant discovery does
not by itself satisfy the §101 inquiry.”
 “We merely hold that genes and the information they encode are
not patent eligible under §101 simply because they have been
isolated from the surrounding genetic material.”
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