Patentable subject matter

Designs -patentable subject matter [PATENTS AND TRADE SECRETS] (Vol 18)... 

Trade secret rights are based on the complete absence of disclosure of the invention to anyone other than the owner. Oftentimes ideas, developments, and advances that are the subject of trade secret protection are those which may not be patentable, for any of a number of reasons. These reasons can include the nature and subject matter of the advance or development, as weU as the commercial value of the advance or development. In any instance, an individual, business, or corporation is weU-advised to consider all possible means of protection when reviewing an advance, development, or invention. 

Tlie next section of the patent is tided "The Detailed Description of the Preferred Embodiment", Q (Fig. lb), often a multipage work serving several functions. First, the detailed description should provide an illustration of the invention in both its broadest or simplest sense and in its most preferred sense. Any elements of the invention that the inventor beheves are crucial to the success or performance of the invention must also be included within this description. Further, tbi< description should provide an explanation of the invention that is definite and illustrative, so as to allow persons having nothing but die patent before diem to practice or use die invention in the manner intended. This description should be understood by those who work in the area that covers the subject matter of the patent. 

A fundamental requirement for obtaining a patent is defining an advance, development, or invention which is within those classes of "subject matter" which the law of the United States regards as patentable. Two classes of patentable subject matter, ie, computer software and biotechnology, are the subject of relatively new and evolving law. However, other types of subject matter rest on fairly certain ground as to patentabiUty. Examples of patents directed to various types of subject matter are described in the following. 

Plants. AsexuaHy reproducing plants, ie, those not propagated by means of seed, also represent a legally recognized class of patentable subject matter under U.S. patent laws. Additionally, the inventor must have discovered and asexuaHy reproduced the plant that is to be the subject of the patent apphcation. Plant patents are assigned a different series of numbers than the majority of patents discussed in the foregoing, such as U.S. Plant Patent No. 3,360 titled "Peach Tree" (7). 

For example, if the invention has cleaning properties it may be a composition of matter, process, or machine, all of which are patentable subject matter. If the invention performs work, it may be a process, article of manufacture, or machine, which are all patentable subject matter. It may also be that the development of a new composition results in a composition of matter and a process of using the composition, both of which are distinct, yet patentable inventions. The various types of patentable subject matter are not mutually exclusive and may be disclosed in a single patent. 

A reissue may be ordered to correct any minor or major mistake which occurred during prosecution of a patent, but the mistake must be one that makes the patent partially or whoUy inoperable. Inoperable essentially means that the patent caimot be enforced. For instance, a reissue proceeding can be used to correct inventorship or even broaden claims if the patent is less than two years old. However, such a request to broaden claims in the context of reissue may not be undertaken to recover subject matter canceled during examination. Further, a reissue proceeding may be undertaken to correct formal problems or address newly discovered prior art which affects the scope of the claims. The nature of a reissue proceeding directs that this mechanism should be used only when the vaUdity of the patent is in question owing to the error or problem in question. 

The interference proceeding is declared by the patent examiner and occurs in the U.S. PTO. Once an interference is declared, a deterrnination is made as to the exact subject matter constituting the invention of the interference and who filed the first patent appHcation on that invention. The first appHcant becomes the senior party to the interference. The junior party has the burden of proving that it was prior in time as to its date of invention. 

Trade secrets may be any type of information, eg, formulae, patterns, compilations, forms, programs, devices, techniques, and processes, as weH as any patentable subject matter. However, in order for it to be a trade secret, there must be definite economic value in the information not being known to the pubHc or readily determinable by a third party. 

Traditional paging through patent office gazettes and printed abstract bulletins stiU serves a usefiil purpose in patent alerting. It can be difficult to frame a query for a computer search on all the subject matter that might be of interest to an organization. The human mind can spot unanticipated material and relate it to interests, something presendy beyond the power of the computer. 

Phenyl-ethyl alcohol can be prepared by numerous methods, several of which are the subject-matter of patents. It may be prepared, for example, by the conversion of phenyl-bromo-lactic acid into phenyl-acetaldehyde, and then reducing this body with sodium. Or it may be prepared by reducing phenyl-acetic esters with sodium and absolute alcohol in the folio-wing manner —... 

Prepare and file the patent application documents. This document is called a specification. The specification must be clear enough so that anyone skilled in the subject matter of the invention could recreate your invention and use it. In the written portion of the specifications the inventor must slate the claims of the invention. These claims must show that the invention is novel and unobvious. Also, where applicable, illustrations must accompany the specification. There are filing fees for patent applications and if the application is successful there are maintenance fees to keep the patent in force. Literature describing patent applications and how they are to be submitted can be obtained from the Commissioner of Patents and Trademarks, Washington, D. C., 20231. This is also the address to submit properly prepared patent applications. 

The initial decision—often called the VICOM decision after the applicant for the patent—was followed by further decisions of the Boards of Appeal that opened the way for the patenting of inventions implemented by means of computers. The reasoning behind these decisions has often been adopted by courts in other countries (not only in Europe, but elsewhere). The German Supreme Court, for example, has explicitly stated that the application of computers in chemistry or biology is acceptable patentable subject matter [14]. 

Patent No. Claims Main subject matter Catalyst Remarks Ref. 

Most of the equivalent patents are incorporated in the discussion, to give a sense of the international coverage to the reader. A summary of the main claim is included as a definition of the property subject matter. As could be seen the property subject matter of a World Intellectual Property Organization (WIPO) patent generally, is identical to one of the corresponding US patent (from the US Patent and Trademark Office, USPTO). However, in some instances a WIPO patent has more than one US equivalent patent. The equivalence between WIPO and US patents will be discussed for each particular case wherever relevant. 

The next step was identification and isolation of DNA fragments encoding the biocatalyst. The same procedure can be applied to any active microorganism. DNA plasmid (Plasmid pTOXI-1 and Plasmid pTOXI-2) and vectors (four different nucleic acid sequences were included, namely SEQ ID No. 1 to 4 see original reference for details [38]) were constructed based on the identified and isolated fragments and constitute part of the claimed subject matter. The described expression of the Dsz+ trait in both a related and non-related heterologous host detailed in the patent, seems to indicate that pTOXI-1 (see patent document [38]) carries all of the genetic information required for conversion of DBT to 2-HBP. 

---