Software & BioTech Patents

billowycookieΠολεοδομικά Έργα

29 Νοε 2013 (πριν από 3 χρόνια και 4 μήνες)

55 εμφανίσεις

PATENTS

Software and Biotech

Victor H. Bouganim

WCL, American University

Victor H. Bouganim, WCL, American University, Spring 2001



Software Patents

EU and UK


Computer
programs “as such”
are not patentable.


The requirement of
“technical effect.”


Systems in which
one of the
components is
software are
patentable.

USA


Systems and processes are
patentable. Software “as such”
may be patentable.


Old law: mathematical
algorithms are not patentable.


New law: software, including
algorithms, are patentable.


Thousands of software patents
are currently registered. Some of
them are controversial.

[http://www.bustpatents.com]

Victor H. Bouganim, WCL, American University, Spring 2001



Source: The Economist, 21 June 2001

Victor H. Bouganim, WCL, American University, Spring 2001



Software Patentability


Patentable
Subject Matter


Utility


Novelty


Non
-
obviousness


Enablement
-

Disclosure

Victor H. Bouganim, WCL, American University, Spring 2001



Patentable Subject Matter

35 U.S.C. Sec. 101

“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 therefor, subject to the
conditions and requirements of this
title.”

Victor H. Bouganim, WCL, American University, Spring 2001



Patenting “Abstract Ideas”


Patents are intended to
cover “devices” or
physical things in the
useful arts, not
abstract, speculative,
or esoteric matters.


A patent issues only if
the invention achieves
a tangible, practical
result.


E.g., a hypothetical
attempt by Einstein to
patent the formula E=mc
2

--

not patentable.


Excluded:


advances in the social
sciences


advances in business
management


articulation of a
scientific principle

Victor H. Bouganim, WCL, American University, Spring 2001



Gottschalk v. Benson

U.S. Supreme Court (1972)


Benson submitted patent claims for a method of converting binary
-
coded
-
decimal numerals into pure binary numerals.


Not directed to any particular technology or machinery, the claims
covered any use of the claimed method in a computer.


The claims were rejected by the PTO, but the rejection was
overturned on appeal; the PTO Commissioner appealed the reversal
of his rejection.


Issue: whether a mathematical formula that has no substantial
practical application, except in a general purpose computer, is
patentable.


The Court held that mathematical algorithms,

such as the formula at issue, were not patentable.

Victor H. Bouganim, WCL, American University, Spring 2001



In re Alappat

Court of Appeals, Fed. Cir., 1994


Alappat’s invention smoothed the waveform displays on a digital
oscilloscope using mathematical formulas to create a clearer picture.


Issue: whether a general purpose machine programmed to
perform certain specialized functions is patentable if it creates a
unique machine that produces a useful, concrete result.


The court found that, although algorithms are not patentable,
Alappat’s claim was not a “disembodied mathematical concept”;
rather, this was a specific machine producing a concrete result,
and was, therefore, patentable.


The court held that a general purpose computer programmed to
perform specific functions pursuant to software instructions
created a new machine which was patentable.

Victor H. Bouganim, WCL, American University, Spring 2001



Stac Electronics v. Microsoft


Stac sued Microsoft for infringement of its patent
for data
-
compression technology.


A federal jury in Los Angeles awarded (in
February 1994) Stac $120 million for patent
infringement and Microsoft $13.6 million for trade
secret misuse.


The parties ended up signing a broad cross
-
licensing agreement after they reached an out
-
of
-
court settlement in June 1994.

Victor H. Bouganim, WCL, American University, Spring 2001



Wang Labs. v. AOL and Netscape

Fed. Cir. 1999



Wang sues AOL and Netscape for patent infringement
on its “Videotex Frame Processing” patent, which
allows users to review, retrieve, and store pages from
many information suppliers.


A key feature in this dispute was a claim in Wang’s
patent that allows the user to assign a name to a
particular page or frame for ease of retrieval, i.e.,
“bookmarking.”


The court finds no infringement because Wang’s patent
is limited to character
-
based protocol, while AOL


and Netscape utilize bit
-
mapped protocol for their
bookmarking features.

Victor H. Bouganim, WCL, American University, Spring 2001



RSA Algorithm Patent

Public
-
Key Encryption


US Patent 4,
405
,829

by Rivest, Shamir & Adleman (MIT).
Issued:
September 20, 1983.
RSA Inc.

Victor H. Bouganim, WCL, American University, Spring 2001



Disclosure of Software Inventions


“The specification shall
contain a written
description of the
invention…as to enable
any person skilled in
the art to make and use
the same, and shall set
forth the best mode…”

35 U.S.C. sec. 112, paragraph 1


The primary issue for
software patents under
section 112 has been
whether a patent
applicant must deposit
source code to meet the
disclosure requirement.


PTO Guidelines provide
means of disclosure
regarding software
patents.

Victor H. Bouganim, WCL, American University, Spring 2001



Business Method Patents


Traditionally, courts held that a system of transacting
business was not patentable unless what was claimed were
the physical means for carrying out the system
--
The
Business Method Exception


In 1994, a dissenting opinion in

In re Schrader

(C.A.F.C.)
criticized the exception as “poorly defined, redundant, and
unnecessary.”


In 1998, the C.A.F.C. in

State Street

put “this ill
-
conceived
exception to rest.”


Since

State Street
, hundreds of business methods
patents have issued.


Victor H. Bouganim, WCL, American University, Spring 2001



State Street Bank v. Signature Financial Group

C.A.F.C. (1999)


Signature appeals from a summary judgment in favor of State Street
finding Signature’s patent invalid under section 101.


Signature’s patent discloses a data processing system for
implementing an investment structure that allows an administrator to
monitor and record financial information flow and maintain a mutual
fund portfolio.


The court held that the transformation of data, representing discrete
dollar amounts, by a machine through a series of mathematical
calculations into a final share price, constitutes a practical application
of a mathematical formula because it produces a concrete result.


After laying the “Business Method Exception” to rest, the
court reversed the district court’s findings.

Victor H. Bouganim, WCL, American University, Spring 2001



Lockwood v. American Airlines, Inc.

C.A.F.C. (1997)


Lockwood held patents relating to automated interactive sales
terminals that provide sales presentations to customers and allowed
customers to order goods and services.


Lockwood sued American asserting that American’s airline
reservation system infringed its patents.


The district court held that Lockwood’s claims would have been
obvious in light of the prior art.


The court, referring to 35 U.S.C. 102(a) and (b), stated that “if a
device was “known or used by others” in this country before the date
of invention or if it was “in public use” in this country more than one
year before the date of application, it qualifies as prior art.


The court upheld the lower court finding of obviousness.

Victor H. Bouganim, WCL, American University, Spring 2001



Internet Patents


Patenting the
multimedia concept?


Compton’s new media


Methods of doing
business on the
internet


Amazon’s 1
-
click
ordering system


Amazon’s affiliate
program system


US Pat. No. 5,960,411 (28
Sep 1999)
-

Method and
System for Placing a
Purchase Order Via a
Communications Network.


Amazon.Com v
Barnesandnoble.Com

(Dist. Wash 1999).

Victor H. Bouganim, WCL, American University, Spring 2001



Amazon.com v. Barnesandnoble.com

C.A.F.C. (2001)


Amazon holds a patent directed to a method and system for
“single action” ordering of items, which allows a consumer to
complete a purchase using only a click of a mouse.


Amazon asserts that BN’s “Express Lane,” a similar “single
action” system, is infringing its patent.


Issues: whether BN’s system infringes and whether Amazon’s
patent is valid.


The court vacated the preliminary injunction, finding that, while
Amazon carried its burden in showing a likelihood of success on
the merits of its infringement claim, BN raised
substantial issues of validity of Amazon’s patent.

Victor H. Bouganim, WCL, American University, Spring 2001



Nonobviousness

35 U.S.C. Sec. 103 (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…”

Victor H. Bouganim, WCL, American University, Spring 2001



Non
-
obviousness Considerations

(1)

The scope and
content of the prior art

(2)

The differences between
the claimed invention and
the prior art

(3)

The level of ordinary
skill in the art

(4) Secondary considerations


Victor H. Bouganim, WCL, American University, Spring 2001



Non
-
obviousness

Secondary Considerations


Commercial success


Long
-
felt but
unresolved need


Failure of others to
make the invention


Victor H. Bouganim, WCL, American University, Spring 2001



Biotech Patents


U.S. Patent law has been extended to include the
patentability of living creatures, their components
and their genes.


Biotech patents have been granted for the
following inventions:


Alzheimer
-
prone mice


DNA sequences


Dolly


the cloned sheep


Genetically modified crops

Victor H. Bouganim, WCL, American University, Spring 2001



Diamond v. Chakrabarty

U.S. Supreme Court (1980)


Dr. Chakrabarty artificially created an oil
-
eating
bacterium and filed a patent application.


The PTO rejected the claim for the bacterium itself on
the grounds it was living matter, and thus outside the
scope of 35 U.S.C. Sec. 101.


Issue: Are living organisms patentable?


The Court finds that the bacterium falls under the
broad language of the statute


Further, the Court stated that any public policy
concerns should be addressed by Congress.

Victor H. Bouganim, WCL, American University, Spring 2001



DISCUSSION


Do Biotech patents slow the progress of
scientific research?


Should a patent be issued for a living
organism?


Should there be ethical boundaries that
limit the patentability of biotechnology?


Should the duration of a biotechnology
patent be shorter than 20 years?

Victor H. Bouganim, WCL, American University, Spring 2001



Discovery of DNA


DNA (Deoxyribonucleic acid) is the molecule
of life.


Watson and Crick worked together to construct
the first three
-
dimensional model of the
structure of DNA in 1953. The model is known
as a double helix and is shaped like a twisted
ladder.


DNA consists of sugars, phosphates, and four
different nitrogen bases.


All animals have DNA


the proportion of
nitrogen bases varies among species.

Victor H. Bouganim, WCL, American University, Spring 2001



Patenting Human DNA


The U.S. Human Genome
Project


Financing the H.G.P.


Race to Map the Genome


Issues Raised by
Patenting DNA


Arguments For and
Against Patenting DNA

Victor H. Bouganim, WCL, American University, Spring 2001



The Human Genome Project


Begun in 1990 and
expected to be completed
in 2003, the U.S. HGP is an
international research
program designed to
construct detailed genetic
and physical maps of the
human genome and to
determine the complete
nucleotide sequence of
human DNA.

GOALS


identify all the genes (about
30,000) in human DNA


determine the sequences of the
3 billion chemical base pairs in
human DNA


store information in databases


develop tools for data analysis


transfer related technologies to
the private sector


address ethical, legal,
and social issues

Victor H. Bouganim, WCL, American University, Spring 2001



H.G.P. Financing


During Fiscal years 1988 through 2000, the U.S.
Department of Energy and the National Institute of
Health have spent approximately $2.53 billion
dollars.


The DOE and NIH genome programs set aside 3%
to 5% of their respective total annual budgets for the
study of the project's ethical, legal, and social
issues.


Currently, there are several private companies at
work on the HGP, which has fueled controversy.

Victor H. Bouganim, WCL, American University, Spring 2001



Race to Map the Genome


The U.S. HGP is in competition with
Celera, a Maryland
-
based corporation,
to successfully map the human genome.


The U.S. HGP publishes its results
daily and provides free access via such
mediums as the Internet
--
by being
publicly available, the information
compiled by the U.S. HGP becomes
unpatentable.


In contrast, Celera compiles its
information in a database, charging an
access fee to users, and is seeking
patents on certain portions of its results.

Victor H. Bouganim, WCL, American University, Spring 2001



Issues Raised by Patenting DNA

The patentability of DNA molecules in

forms that involve human intervention

and that serve a function appears to be

well settled.



Are DNA sequences the sort of subject matter
that our patent system protects?


DNA sequences are not only molecules, but
also valuable scientific information
--
can and
should the value of this information be captured
through patents?


Would allowing patents for DNA sequences
upset the balance between inventors’
interests and public interests?

Victor H. Bouganim, WCL, American University, Spring 2001



Arguments For Patenting DNA


Researchers rewarded for discoveries
and can use profits from patenting to
further their research.


Investment of resources encouraged by
providing a monopoly to the inventor.


Wasteful duplication of effort
prevented.


Research is forced into new, unexplored
areas.


Secrecy is reduced and all researchers
are insured access to the new
invention.

Victor H. Bouganim, WCL, American University, Spring 2001



Arguments Against Patenting DNA


Patents of partial and uncharacterized DNA
sequences will reward those who make
routine discoveries but penalize those who
determine biological applications and
functions.


Patents could impede the development of
diagnostics and therapeutics by third
parties due to costs associated with using
patented data.


As patent applications remain secret,
companies may work on developing
a product that is already being
patented.

Victor H. Bouganim, WCL, American University, Spring 2001



CLASS DISCUSSION


What exactly is patented in the HGP?


Are the HGP results patentable at all?


i.e., are they merely the discovery of laws of
nature which are not protectable or are they
protectable inventions?


Is it legitimate that private companies
monopolize their
discoveries

related to the
HGP?


Should only the process of DNA
sequencing be patentable or should the
sequences themselves be patentable?