Chapter seven looks at the allowed subject matter for patents. § 101 gives four broad statutory classes of subject matter. These classes are broad enough that, like utility, subject matter is not ordinarily a significant hurdle for applicants. Understanding the history of the interpretation of § 101 is important, however, as recent and pending cases have called into question the validity of many software, business method, and biotechnology patents. The Sixth Edition adds discussion of design patents.
When reading each of the cases in this chapter, look at the patents in question first and consider for yourself whether it would make sense to prevent inventors from receiving such patents. Who would gain and who would lose? Is there something special about genetically modified organisms, software, or business methods that makes them either immune to or undeserving of the incentivizing effects of patents?
- For an overview of the law of nonobviousness in design patents, see High Point Design LLC v. Buyers Direct, Inc., (Fed. Cir. Sept. 11, 2013)
Additional Source Material
- See 35 U.S.C. § 101 and MPEP §§ 2105–2106.02
- Diamond v. Chakrabarty, 56 U.S. 447 U.S. 303 (1980)
- Diamond v. Diehr, 450 U.S. 175 (1981)
- State Street Bank and Trust v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir.1998)
- Bilski v. Kappos, 561 U.S. ___ (2010)
- In the Matter of the Patents Act 1977 (Halliburton Energy Services)
- Commissioner of Patents v. Amazon, Inc, 2011 FCA 328 (2011)