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Saturday, July 31, 2010

Is a Method of Doing Business Patentable?

The recent United States Supreme Court decision in Bilski v. Kappos answers this question.  From that decision, the United States Patent and Trademark Office issued a guide for patent examiners.  The guide provides a list of factors that a patent examiner are to evaluate.   

Factors that weigh toward patentability are:

1.  Recitation of a machine or transformation, either express or inherent;
2.  The claim is directed toward applying a law of nature; and
3.  The claim is more than a mere statement of a concept.

Factors weighing against patentability are:

1.  No recitation or an insufficient recitation of a machine or transformation, either express or inherent;
2.  The claim is not directed to an application of a law of nature;
3.  The claim is a mere statement of a general concept.

Contact The Patent Law Office of Robert J. Sayfie if you have any questions, at 1-888-468-0444, or visit

Friday, July 23, 2010

What Does Obviousness Mean With Respect To Patents?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. - Patent Laws

(a) 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.


     (1) 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-
          (A) 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
          (B) 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.

     (2) A patent issued on a process under paragraph (1)-

          (A) shall also contain the claims to the composition of matter used in or made by that process, or

          (B) 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.

     (3) For purposes of paragraph (1), the term "biotechnological process" means-

          (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-

               (i) express an exogenous nucleotide sequence,
               (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
              (iii) express a specific physiological characteristic not naturally associated with said organism;

          (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

          (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

     (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (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 claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

     (2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -

          (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

          (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

          (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

      (3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.