Exam 1 (due Friday 11)~jnosal

Patentability Handbook:

There are three main features that are important when determining whether or not you may be able to patent a product. These features are included in the U.S. Code and can be summarized as follows.

Inventions Patentability (section 101) – If you have been the first to discover any “new and useful process, machine, manufacture, or composition of matter”, or any improvements that are also new and useful you are entitled to a patent as long as your device follows the guide lines set by the later sections of the patent code. Accordingly you must be the original inventor of your product (at the point of invention documentation) in order for the patent to be a valid one.

Novelty and Loss of Right to Patent (section 102) – In order for the patent to be valid it must be considered a novel invention and thus pass the following standards.

• The patent must be of subject matter that you only discovered.
• There must be no recorded evidence (patent, printed work, common knowledge or use) that show the product has been sold or used in the public setting prior to your invention date, in any country.
• There must be no recorded evidence that your product has been sold or used in the public setting, either by you or your competitors, for longer than one year prior to the patent application date, in any country.
• Combinations of existing products must display added advantages greater than the common some of their existing components.

These standards ensure the novelty of the patent in regards to prior art design features and your individual advancement of the invention.

Non-Obvious Subject Matter (section 103) – Non-obviousness prevents your patent from becoming a monopoly on an innovative development that does not further society in any manner requiring expert skill and creativity. Your patent cannot be “obvious, at the time the invention was made, to a person having ordinary skill in the art to which said subject matter pertains.” This ensures that respectable advancements are those that receive patents.

Combinations also run into many obviousness issues. The product created through the combination must not simply provide a convenience of multiple separate features, but utilize existing features to achieve new results. This prevents over bearing monopolies on stolen ideas.

There are also two significant secondary components to determining the patentability of a product. These have been in place since the creation of the patent office, and are standards set for the advancement of mankind as a whole. They are: *The patent must contribute to society. Evidenced by public desire and immediate public use. *The patent must not hinder further innovation.

Recently computer programs have become questioned as patentable processes and have been labeled as algorithms similar to laws of nature, which cannot be patented. Even though a computer program may not be patented alone or be the sole patented feature in a complete process it may still be a significant component to a patents body.

Thomas Jefferson’s original goal for the patent system was to advance innovation and reward the great minds of our time without restricting other creative individuals, who may be able to use one invention as a stepping-stone to many greater things. As long as this concept is in mind and your product falls under the standards listed above it can receive a valid patent.

Patentable Process Policies and Considerations:

The patentability of processes has been an issue ever since the patent office was opened. It has been very difficult to draw the line between a process and a manufacturing technique used to create a product. It is even more difficult to draw that line between a computer program or business method and a patentable process. Only five cases of recent have made their way all the way to the Supreme Court and each case has struggled with the adaptation of prior patent code to the constantly changing technology of this age.

The first issue dealt with in Gottschalk v. Benson was the patentability of a basic computer program or algorithm. According to patent law once something has been released to public it is at their discretion to use and learn from it, and cannot be taken back, thus making it un-patentable. Thomas Jefferson stated that an idea is of this nature and once shared it cannot be reclaimed in the form a patent, since you cannot merely forget something you have learned. The Supreme Court determined that an algorithm equivalent to an idea as well as a law of nature and thus, cannot be patented. A patent of this sort would severely restrict the innovative capabilities in the field and stifle technological development. The resulting decision is that an idea may not be patented but its application in the form of an invention may; still leaving room for further innovation.

The second issue dealt with in Diamond v. Diehr was the patentability of a process involving a computer function. Up until this point no computer program was believed to be patentable and it had been argued that nothing involving a computer program could be patent either. According to the Supreme Courts decision in this case it was possible to patent a process that involved a computer program as long as physical matter was being altered. It must be made clear that the algorithm itself was not being patented, but the process as a whole was the target. A computer program used to improve a specific process’s efficiency can and usually does provide a new and useful patentable process.

The third issue dealt with in Arrhythmia Research v. Corazonix was the patentability of a process involving a computer program that did not alter any specific physical matter. This case presented a dilemma because originally if physical matter was not altered the process was still considered an idea and thus not patentable. Here the court questioned whether or not the process was something more than strictly an algorithm. It declared that again the process claimed the algorithm only in its single use in the specific process and thus was not claiming the algorithm independently. The Supreme Court deemed the process patentable on the grounds that the claims did not describe a law of nature or an abstract idea; they merely claimed a specific process that gave a specific result, which was determined to be patentable. This issue was also reinforced in the case State Street Bank v. Signature Financial Group which dealt with a business method that also used a computational system to determine its out comes. No physical matter was altered in this situation but an algorithm was applied in a specific context to gain quantitative results that were specific to a real world setting. This demonstrated that the algorithm had been reduced from its state as an idea, down to a specific application and process that could be patented.

The fourth and final issue dealt with in Bilski v. Kappos was the use of a business method that was a mathematical formula. The Supreme Court had a split decision as to why the method was un-patentable but came to the same conclusion. According to the majority the patentable process must use a machine or transform some sort of material into something that is of use. In this case the claims encapsulated strictly the business method and was thus a claim on an idea that merely required computers to function. Providing this monopoly would have created a massive limitation on the use of said business method, which would have hindered the social market place especially in the specific sector it dealt with. The minority’s opinion in the case determined that the patent was invalid because business methods have never been patentable and it has been a well-defined standard that many courts should abide by.

These are the four major policies dealt with in the reading. They covered quite thoroughly each one of the business and computer based processes. Each decision resulted in a ruling that was consistent with Jefferson’s original goal to further the advancement of society.

Process Patentability History:

(1972) Gottschalk v. Benson:

This was the first case that dealt with computer programs as a potentially patentable product. There was a lawsuit over the validity of a patent dealing with a mathematical algorithm that comprised the patent. The Supreme Court decided to deny Benson the patent because it determined that an algorithm was the same as an idea or a law of nature. It was similar because it did not have an application to the physical world it was merrily hypothetical. It was also impossible to search every data base to determine of the program was novel with regards to prior art. The court decided that if patents were given to computer programs like this vast monopolies would be created that would hinder general innovation in the advancing field of computer science and many others. Although this case does not deal specifically with processes it sets up further decisions about processes involving computer computations

(1981) Diamond v. Diehr:

In this case a process for curing rubber had been optimized and a patent was desired for it. The process replaced the old guess and check technique that used minimal calculations repeatedly with temperature sensors that could constantly check the temperature of the rubber and give an instant curing time read out through the use of a computer program. This provided an accurate rubber cure every time the machine was used. The Court determined that the product was patentable despite the use of a computer program largely because there was a physical change in the rubber during the process. They argued that the patent was not claiming the algorithm and thus a law of nature; it was merely claiming the specific process as a whole. This was the first major case where a process involving a computer system was allowed a patent after trial.

(1992) Arrhythmia Research Technology v. Corazonix:

This case determined whether or not a machine used for determining if, based on electrocardiographic signals, a person is at risk of acute hear arrhythmia after a heart attack, was patentable. Freeman-Walter-Abele analysis was used to determine first, if a mathematical algorithm was used, and second, if claimed invention was more than just the algorithm itself. The Court of Appeals determined that process, although not altering anything physical was in fact patentable. This decision was based on the fact that the process used physical symptoms to output a result determining a person’s condition. The patent did not merely claim the algorithm in general; it claimed the use of the algorithm in an application that provided life saving benefits. This was a major turning point in determining how much freedom lower courts had interpreting laws based on their own accord instead of the influence of Congress.

(1998) State Street Bank & Trust v. Signature Financial Group:

This case dealt with business plan that used a computer formula to analyze the mark and more effectively invest a large groups money properly to limit the risk of loss during economy fluctuation. It was the first time that a business plan had been analyzed involving a computer program in a major court case. The Court of Appeals declared that the process was patentable because it collected real world data. Since computer calculations are necessary and they represent real world elements that change and fluctuate the process is of patentability. A second important factor that went into this decision was its limited utility in its field. Since there are many ways of creating a system of its nature it did not limit further innovation in programs similar to it. This followed that standard put in place by Jefferson which encourages great thinking and application but does not limit further innovations it the same field of study.

(2010) Bilski v. Kappos:

This is the final case that deals with patenting processes and it also deals with a business method. The process in question involved a technique for hedging risks with a certain business formula. It constantly analyzes the market for fluctuation and invests based on that fluctuation. The Supreme Court determined that this process was not patentable because it relied entirely on the use of an algorithm. Since the concept of hedging risks has been commonly known in the business world the algorithm had a broad impact on many business models. A patent on this algorithm would impact the entire economy and thus would not provided a fair competition through innovation. The Judges had two specific reasons for why they deemed the process not patentable, first the claim must be limited to a machine use or transformation of material to produce something of use, second it has been well defined that Business Methods, similar too laws of nature, have never been patentable.

Standard for Patentable Processes:

In order to define a specific process it is important to have multiple views from experts in that field. This would provide for a more strict analysis on the limitations the patent may bring to its competitors. Although the judges of many courts may be able to apply the standards of the patent code they do not have a full understanding of potential innovation in any given area the way an expert might have.

It is also evident from the cases examined, that transformation of physical matter is not a necessity of a patentable process. The most important factors that must go into any decision should be its impact on adjacent innovations in the field, and the level of intellect and creativity that is involved during the creation of the process.

If the correct individuals are questioned during patent analysis and expected to value the specific standards put in place by Jefferson there should never be any patented processes that conflict with the patent code or confuse further decision by any district, supreme, or appeals courts.