Re: protecting inventions (was: "hot news" myth)

On 6/5/97, Terry Carroll <carroll[_at_]tjc.com> wrote:
>
> On Wed, 4 Jun 1997, John Jackson <rescom[_at_]healthcast.com> wrote:
> >
> > Well, which is it? A discovery or an invention? Doesn't this make a
> > difference with respect to "patentability"?
>
> No. Both 35 USC 100(a) and 101 make it clear that a discovery (or more
> accurately, the application of a discovery) is patentable.
>

Well, yes, but it's not clear they really mean it. If I discover a new plant in the jungle, I do not get a patent on that plant, because it is a "product of nature" and therefore falls within a nonstatutory exception to patentable subject matter. If I discover that E = mc(^2), I probably don't get a patent on that either, because it falls within another nonstatutory exception, this one for abstract ideas. To be patentable, most discoveries require either some useful transformation of a physical product, or concrete application of an abstract idea; in either case, it is the transformation or application that is patented, not the natural product or abstract idea itself.

Mark Lemley
Assistant Professor, University of Texas School of Law Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

You can find a list of my articles and books, and information on how to obtain them, at http://www.law.utexas.edu/lemley/pubs.htm

For information on the Intellectual Property program at UT, see http://www.utexas.edu/law/intelprop/ Received on Fri Jun 06 1997 - 15:14:40 GMT