Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 77

Several years ago, upon the development of mathematical algorithms for use in computer software, the USPTO refused to grant patent applications on such algorithms, since they were considered to be merely abstract mathematical expressions that existed before. However, as protection for such embedded software became important to business and society, the interpretations of Patent Laws were changed by the courts and the USPTO to include some such algorithms, and the machines that use these algorithms, within the scope of patentable subject matter under certain conditions. Due to the complexity of this issue, Chapter 13 explains the present status of the patentability of computer‐related inventions in deeper detail.

Additionally, courts have previously held that living organisms could not be the subject of a patent. However, at present, modified living organisms that are the product of genetic engineering, e.g., human intervention, can be patented, except that people cannot be patented. The products of genetic engineering that are patentable must satisfy all the other conditions for patentability, including usefulness, novelty, and non‐obviousness. Two examples are: the Harvard Mouse, which has been genetically engineered to be more susceptible to certain strains of cancer for purposes of medical research (see U.S. Patent No. 4,736,866); and, second, certain genetically modified organisms which can absorb oil to clean up oil spills that occur when a tanker or pipeline accidentally splits open (see U.S. Patent No. 4,259,444).

Today, the whole subject of genetics falls within the scope of patentable subject matter, and discussions are continually ongoing about the patentability of the results of the Genome Project, which was recently completed. It is my prediction that, in the future, additional patent laws or court decisions will be required to determine which newly developed subject matter may be patented, and which may be available for public use without restraint, as medical procedures are today. The subject matter of biotechnology patents is discussed in detail in Chapter 14.

Prior to 1998, methods of doing business did not fall within any of the categories of patentable subject matter. However, the State Street decision in 1998 (State Street Bank & Trust v. Signature Financial Group, 149 F.3d 1368 (Fed.Cir. 1998)), by the U.S. Court of Appeals of the Federal Court, held that methods of doing business, whether or not implemented using a computer or software, may also be patented, provided all of the other conditions for patentability are met. One such example of a patent that embodies a business method and which has been litigated in court is a patent covering the method of ordering a product online using a single click of the mouse rather than a double click. The patentability of business methods is discussed in Chapter 15.

The law relating to patentability of inventions in each of the three genres—computer‐related inventions, life science inventions, and business methods subject matter—has been vacillating sinusoidally recently. Therefore, you and your patent professional may find it worthwhile to file a patent application covering an invention that does not, or may only marginally, meet the current criteria for patentable subject matter, with an eye toward the future that your patent claims may be found to cover a new, not‐yet‐determined category of patentable subject matter. As of this writing, certain stakeholders in the U.S. patent system, such as the American Bar Association Intellectual Property Law Section and the American Intellectual Property Law Association, among others, have proposed specific legislation to Congress to clarify what is and is not patent eligible in these three areas. Your patent professional will keep you updated as to any relevant changes enacted by Congress.