1 See discussion of 35 U.S.C. § 102 infra notes 463-64 and accompanying text.

2 To be eligible for patent protection, an invention must be either a process, an article of manufacture, a composition or a machine. Discoveries, laws of nature, mathematical algorithms, methods of doing business and the like are not eligible for patent protection. See 35 U.S.C. § 101 (1988).

3 See discussion of 35 U.S.C. § 103 infra note 465 and accompanying text.

4 See 35 U.S.C. § 112 (1988).

5 See 35 U.S.C. § 101 (1988). This language has been interpreted broadly by the Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), wherein the Court held:

The subject-matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting "the Progress of Science and the useful Arts" . . . . Congress employed broad general language in drafting [Section] 101 precisely because such inventions are often unforeseeable.

Judicial precedent does exist denying patentability under Section 101 for claims directed to laws of nature and methods of doing business. See Parker v. Flook, 437 U.S. 584, 589 (1978).

6 See Diamond v. Diehr, 450 U.S. 175, 185 (1981) ("[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas"); Diamond v. Chakrabarty, supra note 460, at 309 ("new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc²; nor could Newton have patented the law of gravity. Such discoveries are 'manifestations of . . . nature, free to all men and reserved exclusively to none.'"); Gottschalk v. Benson, 409 U.S. 63, 72 (1973) ("the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself"); In re Alappat, 33 F.3d 1526, 1542 (Fed. Cir. 1994) (noting that the Supreme Court did not intend to make mathematical algorithms a fourth category of unpatentable subject matter along with Diehr's holding that laws of nature, natural phenomena and abstract ideas, but rather that some types of mathematical subject matter standing alone are only abstract ideas).

7 See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) ("[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability").

8 Section 102 of Title 35 defines the different categories of prior art to include patents issued prior to the applicant's filing date by the United States or by other countries, patents issued by the United States after but filed prior to the applicant's filing date, printed publications distributed in the United States or abroad, evidence of public use or public disclosure of the claimed invention in the United States more than one year before the applicant's filing date, and evidence of a sale or an offer to sell the claimed invention in the United States more than one year prior to applicant's filing date. These categories are defined in 35 U.S.C. § 102 (1988):

A person shall be entitled to a patent unless --

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or . . . .

* * *

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by applicant for patent, or

(f) he did not himself invent the subject matter sought to be patented, or

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

9 Novelty exists unless the prior art completely discloses the invention that is claimed by the patent applicant. For example, if a patent application is filed two years after an article is published in a technical journal which completely discloses the invention claimed in the patent application, the application will be rejected by the PTO on the grounds that the claimed invention lacks novelty over that printed publication through operation of Section 102(b).

10 Section 103 sets forth the nonobviousness requirement, in pertinent part, as follows:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 35 U.S.C. § 103 (1988).

11 Under U.S. law, an inventor may rely on a "grace period" to avoid the otherwise patent-defeating effect of an earlier public disclosure of his or her invention. For example, an inventor may be able to obtain a patent on an invention that was disclosed in a technical journal provided she can establish that she conceived of the invention prior to that disclosure. There is a statutory limit of one year imposed by Section 102(b) on the grace period. This grace period is not available in all countries. As a result, applicants must exercise care before disclosing their invention to avoid forfeiting patent rights in countries other than the United States.

12 Every patent concludes with one or more claims that outline the boundaries of the rights granted by the Government to the patentee. Claims must be commensurate in scope with the disclosure of the applicant, and must be clear and understandable.

13 The first paragraph of Section 112 states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

14 See 35 U.S.C. § 154(a)(1) (1988), as amended by Uruguay Round Agreements Act, Pub. L. 103-465, 1994 U.S.C.C.A.N. (108 Stat.) 4809, 4984 ("[e]very patent shall contain . . . a grant to the patentee . . . the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof").

15 The term of patents was changed as part of the Uruguay Round Agreements Act, Pub. L. 103-465, 1994 U.S.C.C.A.N. (108 Stat.) 4809, 4984. Under the former system, patent rights would begin on the date a patent was granted and would end 17 years later. As part of the transition to the new system, the term of patents that were pending on June 8, 1995, or which result from applications pending on that date, will begin on the date the patent was granted and will end on the date that is the later of 17 years from the date of grant or 20 years from the earliest effective filing date of the application leading to the patent.

16 See 35 U.S.C. § 271 (1988).

17 See 35 U.S.C. § 271(a) (1988), as amended by Uruguay Round Agreements Act, Pub. L. 103-465, 1994 U.S.C.C.A.N. (108 Stat.) 4809, 4984 ("[e]xcept as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent").

18 The United States allows the holder of a United States patent on a process to enforce its rights against a third party that uses a process patented in the United States outside the territorial boundaries of the United States and then attempts to import a product produced using that patented process. See 35 U.S.C. § 295 (1988).

19 There are two forms of infringement, "literal" and infringement through operation of the "doctrine of equivalents." Literal infringement means that the accused product or process contains each and every element set forth in the patent claims. Infringement through the "doctrine of equivalents" refers to a situation where the accused product or process does not have each of the elements set forth in the claims but the accused product or process "performs substantially the same function in substantially the same way to obtain the same result as the patented invention." The latter form of infringement is intended to address situations where an accused infringer has made insubstantial changes to a product to avoid liability for infringement. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607 (1950).

20 This is most often accomplished by submitting new prior art which was not considered by the PTO in the examination of the application. The accused infringer will typically argue that the new information anticipates or makes obvious the claimed invention. While the statute provides that all claims of a patent are presumed valid, the disclosure of new information that was not considered by the PTO can have significant repercussions when these claims are considered by a court. The party may also show that the claims are defective in view of Section 112 because they are broader than what is actually supported by the disclosure.

21 A party can also preclude the enforcement of a patent without specifically addressing the validity of the patent. This can occur, for example, if the patent owner engaged in "inequitable conduct" before the PTO (e.g., the inventor withheld material prior art from the patent office or made other misrepresentations intended to mislead the PTO), or misused its patent rights (e.g., in an antitrust context). In both instances, the patent will be unenforceable against any and all infringers, even if the patent satisfies all patentability requirements.

22 See 35 U.S.C. § 282 (1988): A patent shall be presumed valid. Each claim of a patent (whether independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

23 A party can also challenge the validity of a patent in a reexamination proceeding before the Patent and Trademark Office. In such a proceeding, however, the basis for challenge is limited to novelty and obviousness in view of only certain types of prior art, namely, printed publications and patents.

24 Prior art plays a critical role in patentability determinations. It serves to define the state of the art at the time a patent application is filed (e.g., it establishes the level of ordinary skill in the art). Specific items of prior art serve as the basis of denying patentability to a particularly claimed invention, either singularly in the context of novelty or through combination in the context of obviousness. Because of this, it is imperative that all sources of information that relate to an invention be integrated into patentability determinations.

25 See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (publicly catalogued doctoral dissertation in publicly accessible library properly considered prior art document).

26 The courts developed a test -- the Freeman-Walter-Abele test -- to distinguish claims covering "mathematical algorithms" from those on products and processes that use or rely upon mathematical principles. See In re Freeman, 573 F.2d 1237 (CCPA 1978), as modified by In re Walter, 618 F.2d 758, 766-68 (CCPA 1980); In re Abele, 684 F.2d 902, 907 (CCPA 1982). See also In re Meyer, 688 F.2d 789, 796 (CCPA 1982). The Patent and Trademark Office has promulgated guidelines for interpreting and applying the two-part test for statutory subject matter for inventions involving mathematical algorithms. See 1106 Off. Gaz. Pat. Office 5 (Sept. 5, 1989) and 1122 Off. Gaz. Pat. Office 189 (Jan. 1, 1991).

27 In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994).

28 In re Trovato, 42 F.3d 1376 (Fed. Cir. 1994); In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994).

Ladas & Parry Home Page
National Information Infrastructure - Patents

Posted on 10/5/95
http://www.ladas.com/NII/
Contact Ladas & Parry