What is Patentable Subject Matter Dan L Burk

What is Patentable Subject Matter? Dan L. Burk Chancellor’s Professor of Law University of California, Irvine

Article 52 EPC The following in particular shall not be regarded as inventions within the meaning of paragraph 1: discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information.

Section 101 Four Categories “Anything Judicial under the sun” Exceptions Abstract ideas Laws of nature Products of nature Mental steps (? ) Printed matter (? )

Judicial Exceptions No Independent Content Novelty Pre-existing Naturally occurring Inventiveness Pre-1952 cases Utility Judge Moore

The First Round Gottschalk Binary Parker v. Benson notation v. Flook Alarm limits Diamond Living organisms Diamond Cured v. Chakrabarty v. Diehr rubber process

The Second Round Bilski v. Kappos Hedging Mayo business method v. Prometheus Diagnostic AMP v. Myriad DNA Alice method sequences Corp. v. CLS Bank Auction business method

Mayo v. Prometheus Diagnostic/treatment Drug Method metabolism Unclear Basis Law of nature? Abstract idea? Mental steps? Unpatentable Correlations

AMP v. Myriad Genetics Products of Nature First clear holding g. DNA and c. DNA Different outcomes Distinguishing Molecules Information? Structure? Future Application

Alice Corp. v. CLS Bank Business Method Process, system, media Stand or fall together Two-Step Test First, forbidden category? Second, inventive concept The Myriad Puzzle

The Myriad Puzzle Prometheus Unremarked The Two-step Test c. DNA passes g. DNA fails First No Prong Inventive concept Entirely conventional

The “Inventive Concept” Subject Matter Obviousness Without Levels 103 limitations of Abstraction Alice first prong Shades of copyright 101 Claim Interpretation Without construction The “draftsman’s art”

Thank You Questions Welcome