“101, remedial” or “What do you expect?”

Today was a pretty relaxed day. We had a lot of talk about “expectations,” in terms of what the trainers, SPEs, technical directors, and our fellow lab mates expect of us. To be honest, most of the expectations were really just advice, like “ask questions.” In other words, nothing you’d be fired for or reprimanded for – if you don’t ask questions but do your job well, is anyone really going to care?

We switch over to the 9-80 schedule next week. For anyone who doesn’t know, that means working 8 nine hour days and one eight hour day per bi-week, with one of the Fridays off. Definitely not a bad deal.

We had our first lecture on 35 USC 101 today. I thought it was fairly interesting. Here are the highlights:

What is patentable under 101?

Any new and useful process, material composition, machine, manufacture, or improvement.

So when doing a 101 check, how do you ascertain that the application meets the requirements? Well, you go through it claim by claim, and check which type of patentable invention it might be. If the claim says “a method to,” it is probably a process. If it says “a system comprising,” it is probably a machine. If it says “a product” it is probably an article of manufacture. We didn’t see any material composition examples, so I can’t speak to that one.

Next, we get back to the whole “new and useful” thing that fouled so many people up before. Well, we pretty much ignored the “new” part of it, since novelty is covered under 102. Instead, we talked about utility.

How do you ascertain utility?

The utility of the machine must be specific, substantial, and credible.

So what does this mean? “Specific” means specific to the class. You can’t claim a new widget  whose only usefulness is to do exactly what other widgets do. Not that you can’t claim a new widget that does the same thing faster, say, than existing widgets. Or that has some other benefit. But you can’t say the invention is useful because it does what every other invention in its class does, unless you are improving upon that result somehow.

Substantial means that the invention has a “real-world” use. Gosh, that’s vague, isn’t it? It seems that this restriction is there to prevent inventors from coming up with a widget that doesn’t have any specific application yet, but might eventually have an application after further research is done.

Credible is easy. No violations of the laws of nature. I imagine that if you’re clever enough to break a law of nature, presenting a working model of your invention would secure you the patent – and invalidate a “law of nature” in the process.

We also covered judicial exceptions, but I don’t really feel like going into it right now… this has been a long enough post as it is.


Leave a Reply

Your email address will not be published. Required fields are marked *