Footnote 1:
The Copyright Clause: [The Congress shall have power] "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;" U.S. Const art. 1, Sec. 8, cl. 8.
Footnote 2:
See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989). Justice O'Connor gives a brief overview of the history of patent laws in the United States.
Footnote 3:
35 U.S.C. §§ 1-376. Word document containing the whole statute is here.
Footnote 4:
Compare 35 U.S.C. §154(a)(2) (1993) with 35 U.S.C. §154(a)(2) (2000).
2000 version below:
Sec. 154. - Contents and term of patent - (a) In General. - (2) Term. -
Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed.
1993 version below:
Sec. 154.
Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, for the term of seventeen years, subject to the payment of fees as provided for in this title [35 USCS §§ 1 et seq.], of the right to exclude others from making, using, or selling the invention throughout the United States and, if the invention is a process, of the right to exclude others from using 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. A copy of the specification and drawings shall be annexed to the patent and be a part thereof.
Footnote 5:
"Every 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...."
35 U.S.C. §154(a)(1) (2000).
Footnote 6:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title."
35 U.S.C. §101 (2000).
Footnote 7:
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948).
Footnote 8:
Diamond v. Chakrabarty, 447 U.S. 303 (1980).
Footnote 9:
State Street Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998).
Footnote 10:
U.S. Pat. No. 5,960,411.
Footnote 11:
Diamond v. Diehr, 450 U.S. 175, 185 (1981).
Footnote 12:
In Re Alappat, 33 F.3d 1526 (Fed. Cir. 1994).
Footnote 13:
Gottschalk v. Benson, 409 U.S. 63 (1972).
Footnote 14:
Sec. 101. - Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title
35 U.S.C. §101 (2000).
Footnote 15:
"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 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."
35 U.S.C. §112, ¶1 (2000).
Footnote 16:
Brenner, Commr. of Patents v. Manson, 383 U.S. 519 (1966).
Footnote 17:
Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
Footnote 18:
35 U.S.C. §112, ¶1 (2000).
In this context, a person "skilled in the art" is a person in the same field as the invention, or a field that is relatively similar to that of the invention. For instance, a polymer-chemistry Ph.D. is in the same field as a plastics invention.
Footnote 19:
Gould v. Hellwarth, 472 F.2d 1383 (Cust. & Pat. App. 1973).
Footnote 20:
35 U.S.C. §102 (2000).
Conditions for patentability; novelty and loss of right to patent:
A person shall be entitled to a patent unless—
- 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
- 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
- he has abandoned the invention, or
- the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or
- The invention was described in —
- an application for patent, published under §122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in §351(a) shall have the effect under this subsection of a national application published under §122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or
- a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in §351(a); or
- he did not himself invent the subject matter sought to be patented, or
-
- during the course of an interference conducted under §135 or §291, another inventor involved therein establishes, to the extent permitted in §104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
- before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, 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 tome prior to conception by the other.
Footnote 21:
Michelle Delio, Software Writers Patently Enraged, Wired News (Apr. 11, 2002) <http://www.wired.com/news/politics/0,1283,51689,00.html>.
Footnote 22:
See Pennock v. Dialogue, 27 U.S. 1 (1829), see also In Re Borst, 345 F.3d 851 (C.C.P.A. 1965).
Footnote 23:
Egbert v. Lippmann, 104 U.S. 333 (1881).
Footnote 24:
See Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998); UMC Electronics Co. v. United States, 816 F.2d 647 (Fed. Cir. 1987); In Re Theis, 610 F.2d 786 (Cust. & Pat. App. 1979).
Footnote 25:
City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877).
Footnote 26:
W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540 (1983), cert. denied, 469 U.S. 851 (1984). (This case determined that W.L. Gore could patent Gore-Tex®, while the earlier inventor of the same process was unable to stop the patent due to concealment).
Footnote 27:
35 U.S.C. §103 (2000).
Sec. 103. - Conditions for patentability; non-obvious subject matter
- 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.
- Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if -
- claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
- the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
- A patent issued on a process under paragraph (1) -
- shall also contain the claims to the composition of matter used in or made by that process, or
- shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
- For purposes of paragraph (1), the term ''biotechnological
process'' means -
- a process of genetically altering or otherwise inducing a single- or multi-celled organism to -
- express an exogenous nucleotide sequence,
- inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
- express a specific physiological characteristic not naturally associated with said organism;
- cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
- a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
- Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person
Footnote 28:
Graham v. John Deere Co., 383 U.S. 1 (1966).
Footnote 29:
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983).
Footnote 30:
State Street Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998).
Footnote 31:
Diamond v. Diehr, 450 U.S. 175 (1981).
Footnote 32:
James Gleick, Patently Absurd, N.Y. Times §6, p.44 (March 12, 2000) (available at <http://www.around.com/patent.html>).
Footnote 33:
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343 (Fed. Cir. 2001).
Footnote 34:
ComputerWire, Amazon settles 1-Click patent dispute, The Register (March 8, 2002) <http://www.theregister.co.uk/content/23/24345.html>.
Footnote 35:
Damien Cave, Patently Bezos, Salon.com (March 16, 2000) <http://www.salon.com/tech/feature/2000/03/16/patent/index.html>.