JEC COMPOSITES MAGAZINE - Issue #79 - March 2013 - 35

Process patents are directed at
applications of a natural law, as
shown in this drawing, not the law
of nature itself.

a process is not valid if it
merely «inform[s] the
relevant audience about
certain laws of nature; has
additional steps consisting
of well-understood, routine,
conventional activity already
engaged in by the scientific
community; and those steps,
when viewed as a whole, add
nothing significant beyond
the sum of their parts taken
separately.»

In view of this, and in view
of the historical value of
process patents to chemical processing companies,
innovators in the composites industry may wish to
consider developing patent
portfolios corresponding to
their innovations, whether
newly developed composites,
processes, or techniques.
Such a patent portfolio (1)
has value as an intangible
asset, (2) may offer competitive advantages in the
market, and (3) may supplement revenue streams as part
of a licensing or enforcement
programme, especially as the
companies’ innovations become the basis for increased
customer demand.

The recent Supreme Court
holding is applicable to
industrial process patents,
including those in the
composites industry. It will
therefore be important, in
enhancing a composites patent portfolio, to seek patent
claims which take account of
the concerns addressed by
the recent Supreme Court
case, and those subsequent
cases applying it. In general
terms, whether an inventive
process is patentable turns
on whether it is viewed as an
unpatentable law of nature
or computer algorithm, on
the one hand, or a patentable
application or such law of
nature or algorithm, on the
other hand.

Challenges to enforcing
process patents

A patent’s validity or invalidity under this test may turn
on specific words used in the
patent claims. So it has now
become even more important for composites innovators and patent practitioners
to devise a varied claim
programme. In this way, if
some patent claims fall on
the unpatentable side of the
test, there may be other patent claims which are on the
other side of the line and are
thus able to be licensed or
enforced [5].

Despite the inherent value in
such a patent portfolio, the
Supreme Court of the United
States recently may have
raised the bar on enforcing certain types of process
patents.
Just last year, the court signalled its continued concern
about potentially over-broad
process or method patents
and invalidated two such
process patents [4]. The
court held that a claim to

Protecting computer innovations in the composites industry
In the twenty-first century,
many composites innovations are tied to improved
computer programming, or
computer-controlled processes. In the United States,
while computer software by
itself is not generally eligible
for patenting, a computerimplemented invention or
computer-controlled process
may be patented. The
general test is whether the
computer-driven process is
tied to a particular machine,
or whether it accomplishes a
transformation of an object
or thing. While computerdriven composites processing often involves transformations, it should be noted
that, in order to be eligible
for patenting, the transformations generally need to relate to the invention, and not
merely to tangential or postsolution activities. Again, the
lesson for composites innovators is that, in the United
States, computer-related
inventions may be used to

Patents on composites process
improvements, and even on
subcomponents like these, may
enhance a company’s value.

No79 March 2013 /

enhance the value of the associated composite, and may
lead not only to a valuable
intangible asset, but also to a
separate revenue stream from
licensing or enforcement of
such invention.

A strategic programme
for enhanced-value
composites
In view of the foregoing, a
strategic programme which
aligns composites innovations with patent efforts
is worth considering. The
resulting patent protection,
in turn, will likely increase
the prestige of the composites innovator, advance the
state of the art, and enhance
the value of the associated
composites and techniques. n
References
[1] Chris Barry et al., Pricewaterhouse-Coopers, 2012 Patent
Litigation Study: Litigation
Continues to Rise Amid Growing Awareness of Patent Value
(2012), available at http://www.
pwc.com/en_US/us/forensic-services/publications/assets/2012patent-litigation-study.pdf.
[2] Johns-Manville Corp. v.
Guardian Indus., 718 F. Supp.
1310 (E.D. Mich. 1989).
[3] See Union Carbide Chems.
v. Shell Oil Co., 2004 U.S. Dist.
Lexis 10730 (D. Del. June 9,
2004) rev’d on other grounds,
425 F.3d 1366 (Fed. Cir. 2005).
[4] Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S.
Ct. 1289 (U.S. 2012).
[5] For two chemical process
cases coming to opposite results, compare Diamond v. Diehr,
450 U.S. 175 (1981), with Parker
v. Flook, 437 U.S. 584 (1978).

More information:
richard.gilly@akerman.com
www.akerman.com

jec composites magazine 35

http://www.pwc.com/en_US/us/forensic-services/publications/assets/2012-patent-litigation-study.pdf http://www.akerman.com

JEC COMPOSITES MAGAZINE - Issue #79 - March 2013

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