IP class 3

recap.
elements of trade secret claim
- protectable subject matter
   - legal criteria: information that is secret and has value by virtue of its secrecy
   - evidentiary factors: fourtek, restatement of torts s. 757 cmt (b)

- reasonable effort to maintain secrecy
  - a stand alone element or merely circumstantial evidence?

- misappropriation
  - by improper means
    - economic v. moral theories of propriety (see posner)
    - defenses: proper means, eg reverse engineering
  - by breach of a confidential relationship
    - express in contract or implied by circustances
    - problem of employee mobility and right to earn a livelihood 

next series of classes - patents.

divided into four topics:
- patentability
- infringement/ rights of patentees
- defenses
- remedies

patentability.

five areas

1. subject matter (class 3)

2. enablement

3. utility

4. novelty (class 4)

5. nonobviousness (class 4)

Subject matter - 35 USC s. 101 inventions patentable

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.

there's a lot of criteria in this stat text for what a patent can cover, and we
can infer what is not patentable:
- things not new
- things not useful
- things not a process, machine, etc
- things not an improvement upon

process patents
product patents

what is not a process, machine, manufacture or composition of matter?

E = MC2 ... einstein couldn't patent the formula. why?
the laws of nature, physical phenomena, and abstract ideas are not
patentable. but this is not a simple distinction.

business methods? bilski v. kappos
machine or transformation test.
by definition, something that is new is something that we didn't know
before. we have the understanding that technology moves faster than
law and we need to craft our law broadly to encourage technological
growth.

hedging. a patent on the process would give an exclusive right, and
perhaps the court didn't allow this patent because "no one man should
have all that power"... and perhaps competition that exists in this
particular industry will incentive the industry innovators sufficiently
without patents.

living things?
- diamond v. chakrabarty: is the process that chakabarty developed
   patentable?
  even if we have the argument "life is different and we can't treat it
  like other processes", that's an argument that the courts aren't competent
  to decide. what are the implications of this?
  1. this is an important question that congress must weigh in on
  2.

- parke davis co v. HK mulford co
  is this process patentable?
  adrenaline itself exists in all mammals naturally, but it takes a lot of
  work to purify and isolate this and make it useful

in order to be patentable,

brenner v. manson: "a patent is not a hunting license"
- CCPA: "where a claimed process produces a known product it is not
  necessary to show utility for the product, so long as the product is
  not alleged to be detrimental to the public interest.

 Fortas: "until the process claim has been reduced to production
 of a product shown to be useful, the metes and bounds of that
 monopoly are not capable of precise delineation. it may engross
 a vast, unknown, and perhaps unknowable area. such a patent may
 confer power to block off whole areas of scientific development,
 without compensating benefits to the public."

- Harlan, dissenting: "the abstractly logical choice for researchers
  after the court's ruling seems to me to be to maintain secrecy until
  a product use can be discovered. as to discouraging the search by
  others for product uses, ... the price paid for any patent is that
  research on other uses or improvements may be hampered because
  the original patentee will reap much of the reward."

35 USC s. 112:

office action.

2. an overview of patent laws
a. requirements for patentability
1. subject matter
2. novelty
3. useful
4. nontrivial
5. description

novelty test: determines whether the claimed invention is unpatentable because it was made before, sold more than a year before a patent application was filed, or otherwise disqualified by prior use or knowledge.

utility is not much of an obstacle.