inventedhere
Patent Eligibility as a Function of New Use, Aggregation and Preemption Through Application of Principle
By long-standing judicial precedent, laws of nature, natural phenomena, and abstract ideas are excepted from eligibility for patent protection. The Supreme Court recently promulgated a two-part test that excludes from eligibility subject matter that is directed to any of these judicial exceptions unless there is something “significantly more,” namely “invention” or an “inventive concept.” The test is intended to bar patent protection that would preempt use of any of the judicial exceptions themselves.“Preemption,” however, is related to two earlier, and now obsolete, doctrines of “new use” and “aggregation” in that all three derived from eighteenth-century English case law that viewed inventive methods to be applications of principle within the meaning of eligible “manufactures” under the Statute of Monopolies. When the Patent Act of 1952 recast the language of its predecessor statutes and earlier jurisprudence into separate provisions under Title 35 of the United States Code (U.S.C.) for eligibility (§101), novelty (§102) and non-obviousness (§103), “new use” and “aggregation” were no longer considerations of eligibility because, as stated most succinctly by Judge Learned Hand, “the definition of invention [is] now expressly embodied in §103.” For the same reason, the doctrine of “preemption” and its attendant “two-part test” should follow suit.
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NEWSLETTER ARCHIVE
Volume 48, Issue 3
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N-Scott-Pierce
Index
Community Calendar Read more >
Table of Contents
Message from the President Monica Grewal
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Harvesting Innovation: 3 Tips for IP Managers
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Save the Date: BPLA Annual PCT Seminar and Madrid Protocol Seminar
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The Annual Dinner to Honor the Federal Judiciary, May 12, 2017
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Patent Attorneys Give Back to Local Entrepreneurs and Artists
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PTAB/Hatch-Waxman Parallel Proceedings
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Helsinn Healthcare S.A. et al. v. Teva Pharmaceuticals USA, Inc.
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In memoriam of Douglas C. Doskocil
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On-Sale Bar to Patent Protection Under the AIA
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Chemical Patent Practice Lamplighter Brewery tour
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Fashion and Intellectual Property: Many Options to Protect Your Design, But No One-Stop Shop
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Patent Eligibility as a Function of New Use, Aggregation and Preemption Through Application of Principle
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“Making Connections in Boston’s IP Community”
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Settlement Agreements Can Provide a Yardstick for Measuring Damages in Subsequent Patent Infringement Lawsuits
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The Federal Circuit Limits the Scope of Covered Business Method Proceedings
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The Supreme Court’s 2016-2017 Term – An IP Case Summary
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Members On The Move
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Message from the Editor-in-Chief
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BPLA Biotechnology Committee Announcement
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Officers and Board of Governors
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Community Calendar
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Announcement of BPLA’s 7th Annual Invented Here! Program
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Save The Date: BPLA’s Second Annual PTAB Summit
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