Chapter seven looks at the allowed subject matter for patents. § 101 gives four broad statutory classes of subject matter. These classes are broad enough that, like utility, subject matter is not ordinarily a significant hurdle for applicants. Understanding the history of the interpretation of § 101 is important, however, as recent and pending cases have called into question the validity of both software and business method patents.
When reading each of the cases in this chapter, look at the patents in question first and consider for yourself whether it would make sense to prevent inventors from receiving such patents. Who would gain and who would lose? Is there something special about genetically modified organisms, software, or business methods that makes them either immune to or undeserving of the incentivizing effects of patents?
The British case In the Matter of the Patents Act 1977 (Halliburton Energy Services) contains an excellent treatment of the British law of patent eligibility and the patentability of software-based inventions.
- See 35 USC 101 and MPEP §§ 2105–2106.02
- Diamond v. Chakrabarty, 56 U.S. 447 U.S. 303 (1980)
- Diamond v. Diehr, 450 U.S. 175 (1981)
- State Street Bank and Trust v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir.1998)
- Arrythmia Research v. Corazonix, 958 F.2d 1053 (Fed. Cir.1992)
- In the Matter of the Patents Act 1977 (Halliburton Energy Services)