Introduction to Patent Law
discussions of rival
descriptions of a
Hippodamus called for a system of
rewards to those who discover
things useful to the state.
Sources of U.S. Patent Law
The Patent Cooperation Treaty (PCT)
The General Agreement on Tariffs & Trade’s
Agreement on Trade-Related Aspects of
Intellectual Property (GATT-TRIPs)
Patentability of Inventions
– Subject Matter – Application
– One Year Time Limit
– Originality NOTE: Although
– Novelty specifications and claims are
their content forms the
substance of much of the
litigation over patent validity,
priority, and infringement.
Rights Conferred by Patent
Make, Use, or Sell the Patent
In the United States
During the term of the Patent
– Begins on the patent issue date, but
– Ends 20 years from the U.S. application filing date
Statutory Subject Matter versus
Nonstatutory Subject Matter
Section 101 Statutory Section 101 Exclusions
Subject Matter and Nonstatutory
– Process Subject Matter
– Inventions lacking a
– Laws of nature
– Natural phenomena
Composition of matter
– Abstract ideas
– Improvement Mathematical algorithm
Legal Application of Section 101
Subject Matter is established for:
– (1) Whoever invents or discovers
– (2) any new and useful
– (3) process, machine, manufacture, composition of
– (4) or any new and useful improvement
– (5) subject to conditions and requirements of Title
Subject Matter Cases Bold represents assigned cases
Cases Court Year Rule/Holding
O’Reilly v. Morse S. Ct. 1853 Claims to principles or theories that are not embodied in a process or product
are not statutory subject matter, because such protection would impede
innovation and Congress did not intend protection to extend so broadly.
Tilghman v. Proctor S. Ct. 1880 Claims to a process for producing fatty oils for art is statutory subject matter,
because the process solves a particular problem in a new and useful manner
that cultivates innovation. A process is distinguished from a principle.
Gottschalk v. Benson S. Ct. 1972 Claim to a formula to convert binary code decimal to pure binary code was
not statutory subject matter, because the “process” claim is so abstract and
sweeping as to cover known and unknown uses of the formula.
Parker v. Flook S. Ct. 1978 Claim to a method for updating alarm limits by using a formula, which used a
number to generate another number was not statutory subject matter,
because the computer program was only a formula doing computations.
Diamond v. Chakrabarty S. Ct. 1980 Claim to live, human-made micro-organism is statutory subject matter,
because the invention is a non-naturally occurring manufacture or composition
of matter, from human ingenuity, having a distinct name, character, and use.
Diamond v. Diehr S. Ct. 1981 Claim to a process, which uses in part a mathematical formula and a digital
computer, of properly curing rubber, is statutory subject matter, because the
computer and formula are applied to a process ending in a useful result.
State Street Bank & Trust Co. v. CAFC 1998 A practical application of an abstract idea, for example, a mathematical
Signature Financial Group, Inc. algorithm, formula, or calculation, is statutory subject matter when the
application of the abstract produces a ”useful, concrete, and tangible result.