In this chapter, we argue that while it has often been suggested that utility models are a product of late nineteenth-century German thinking and that they are foreign to the United Kingdom, utility model protection was first introduced to the United Kingdom in the Utility Designs Act 1843. As such, it is clear that utility model protection has a long established (albeit somewhat tarnished) pedigree in British law and that utility model protection came into force in the United Kingdom some fifty years before its German counterpart. In this chapter we highlight the key features of the Utility Designs Act 1843, the way the Act was received, and speculate on the reasons why the Act was forgotten

This chapter looks at the legal consequences of the demise of the molecular gene within science with the rise of postgenomics in the later part of the twentieth century. It also looks at the apparent dematerialisation of subject matter that occurred as a result of the Myriad decision, when biological subject matter came to be seen in terms of instructions or information rather than as a material chemical compound. It ends by showing that despite this apparent dematerialisation that materiality has continued to play an important role in the way that patent law interacts with biological subject matter.

The conclusion draws together the arguments of the previous chapters to return to the questions posed at the outset, namely what does it mean to grant patent protection over an immaterial subject matter and what role did science and technology play in allowing the law to deal with and accommodate that subject matter? After outlining the different roles that materiality has played in patent law over time and what its absence means, I speculate on the consequences of the recent shift to dematerialised subject matter and the role that science and technology might play in that process.

This chapter begins by outlining the dematerialisation of subject matter that has occurred over the last two decades or so and the problems that this has created for the law. I then explain the aims of the book, namely to look at three situations where patent law has already dealt with a dematerialised subject matter and the role that science and technology played in helping the law to accommodate that subject matter. I end by explaining the particular way that I approach subject matter in the book.

Chapter 7 shows how in the 1980s patent law came to view computer-related subject matter through the lens of ‘abstractness’ and the role that materiality played in determining the fate of that subject matter. The chapter also looks at how as a result of changes in technology, patent law gradually shifted away from the materiality of the subject matter to look at its specificity and in so doing how the subject matter was dematerialised.

This chapter begins by providing an overview of the key features of early chemical subject matter, namely that it was fickle, empirically based, and rapidly changing. After outlining the problems this created for patent law, I look at the way that patent law dealt with one of these problems. This was how to reconcile the way that chemical inventions were created with a mechanical understanding of invention that dominates in patent law.

After looking at how software was created and consumed in the 1960s and, as this changed, how it gave rise to questions about the role intellectual property might play in the emerging software industry, Chapter 5 looks at the contrasting ways that patentable subject matter was seen within the information technology industry and how these views were received within the law.

This chapter builds upon the previous chapter to look at the way that plant-based subject matter changed across the twentieth century as science began to look below the surface of plants at the molecular or cellular level. It also traces the shift from plant to biological subject matter which, over time, changed to become a molecular subject matter. It ends by looking at the role that materiality played in helping the law to deal with a molecularised subject matter.

This chapter looks at the way that patent law resolved some of the other problems that chemical subject matter posed, particularly in working out how to define the boundaries of what was being examined or protected. While patent law employed a number of different strategies to delimit a fickle, empirically based, and changing chemical subject matter, this chapter highlights the central role that the materiality of chemical compounds played in helping the law to accommodate chemical inventions.

This chapter begins by outlining the changes that took place in second half of the nineteenth century with the rise of structural formula in chemistry and what this meant for patent law. Of particular importance was that it led to a shift away from the materiality of chemical compounds to more paper-based speculative inventions. The chapter ends by looking at what this dematerialisation of chemical subject matter meant and how the law responded.

This chapter begins by highlighting the notable characteristics of plant-based subject matter and the problems this posed for patent law. It then looks at the way that patent law responded to these problems. Specifically, it looks at how the process of invention was reconfigured to take account of the peculiarities of plant-based subject matter; the role that materiality played in helping the law to draw boundaries around the subject matter; and finally the role that the informed nature of the subject matter played in allowing patent law to deal with plant-based subject matter.

Chapter 6 looks at the problems patent law experienced in the 1960s and 1970s in attempting to reconcile the conflicting views of the industry about what the subject matter was and how it should be interpreted.

IN THE MID-1920S, Henry F. Bosenberg, a landscape gardener from New Brunswick, NJ, purchased a number of roses for use in his landscape business. These included several “Dr. Van Fleet” roses, the climbing rose which had been bred by Dr. Walter Van Fleet at the US Department of Agriculture Plant Introduction Station, and introduced in 1926. The Dr. Van Fleet rose, which had been developed by crossing a tea rose with Rosa wichuraiana, was one of Van Fleet's “backyard roses” that were marketed as roses with beautiful flowers, luxuriant foliage, colorful hips, and that were resistant to disease and able to thrive in America's harsh climates. While Dr. Van Fleet roses typically only bloomed once a year for around two weeks, Bosenberg noticed that one of the Dr. Van Fleet roses that he had bought continued to bloom after the other Dr. Van Fleets had finished flowering. After watching the aberrant plant for two seasons, Bosenberg used the ever-blooming rose to propagate a number of new plants. Bosenberg noted that because the propagated plants bloomed the very first year and continued to bloom, and because plants that were budded from those young plants also continued to bloom, there would be little danger of it reverting to the original Dr. Van Fleet. As a result, a new variety of rose—the Rosa “New Dawn”—was born.

Unlike the ordinary Dr. Van Fleet rose, which—in New Jersey, at least—usually bloomed for around two weeks in early June, with the occasional rare flower in mid-summer or fall, the New Dawn rose flowered continuously from early June until growth was stopped by frost, usually in late October. Recognizing the potential value of this repeat-flowering rose, Bosenberg filed for plant patent protection on 6 August 1930 from the US Patent and Trademark Office underthe 1930 Plant Patent Act. After some initial problems—primarily caused by the US Department of Agriculture's demand for proof of the New Dawn's “everblooming characteristics”—Plant Patent Number 1 was granted for the New Dawn rose on 18 August 1931.The Plant Patent Act, which had been signed by President Hoover on 23 May 1930, had emerged in response to complaints from the nursery industry that the future of the plant breeding industry was beingjeopardized by the “pirating” of new plant varieties.