Chapter 3
Three Strands of Utility Doctrine
• Operability: Does it work? (Should prophetic
utilities be allowed?)
• Beneficial Utility: Does it produce some social
benefit (or at least no social harm)?
• Practical or Specific Utility: Is the utility identified
by the inventor a “substantial” utility? See
Brenner v. Manson p. 233. (Should
substantiality be decided in the abstract or by
reference to the potential range of utilities for the
invention?).
Examples
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New method for freebasing cocaine?
New business model for a bordello?
A method for traveling back in time?
A method for cooking chicken with a cyclotron?
A clever new board game?
An isolated and purified strand of DNA that can
be used as dog food?
Lowell v. Lewis
• Story’s view: “All that the law requires is, that
the invention should not be frivolous or injurious
to the well-being, good policy, or sound morals
of society. The word ‘useful,’ therefore, is
incorporated into the act in contradistinction to
mischievous or immoral.”
• Market should determine utility: “[W]hether it be
more or less useful is a circumstance very
material to the interests of the patentee, but of
no importance to the public. If it be not
extensively useful, it will silently sink into
contempt and disregard.” This is the real
holding of the case, since no party in the case
was arguing that the invention was immoral.
Story and Beneficial Utility
• Justice Story’s view is both permissive and demanding. An invention
need not be profitable or economic improvement over prior art, but it
must comply with society’s morality standards.
• Certain biotechnology inventions have resuscitated at least a debate
about the beneficial utility doctrine.
• In 1998, the PTO publicly stated that the beneficial utility doctrine
might preclude a patent on a human/animal chimera, but the agency
ultimately rejected that patent application on the ground that human
hybrids are not patentable subject matter under § 101. See p. 225.
• Congress enacted an appropriations rider (a legal limitation found in
an appropriations bill) that precludes the patenting of an human
organism. The rider — popularly known as the “Weldon
Amendment” — reads:
– “None of the funds appropriated or otherwise made available
under this Act may be used to issue patents on claims directed
to or encompassing a human organism.” Consolidated
Appropriations Act, 2004, Pub. L. No. 108-199, Division B, Title
VI, § 634 (Jan. 23, 2004).
Juicy Whip v. Orange Bang:
An Under-the-Counter Invention
Juicy Whip v. Orange Bang
• Narrow holding: “The fact that one product can
be altered to make it look like another is in itself
a specific benefit sufficient to satisfy the statutory
requirement of utility.”
• Broader holding: “[E]ven if the use of a reservoir
containing fluid that is not dispensed is
considered deceptive, that is not by itself
sufficient to render the invention unpatentable.”
– Other institutions.
• Juicy Whip does not hold that an invention is
patentable even if it is illegal in all 50 states.
What is the position of TRIPs Art. 27.2 on illegal
inventions?
• EPO’s view and Harvard Oncomouse case.
Brenner v. Manson
• November, 1956: Ringold and others publish an
article revealing that a number of compounds,
including the steroid at issue, were being tested
for tumor inhibiting effects. The article also
shows that a compound closely related to the
relevant steroid was effective in inhibiting
tumors.
• December 17, 1956: Ringold and Rosenkranz
file a patent application seeking a patent on the
new process for making the known steriod.
• October 13, 1959: Ringold and Rosenkranz
receive a patent on the process.
• January, 1960: Manson files a patent application
for the same process.
Brenner v. Manson
• Manson is essentially the Supreme Court’s only decision
on the utility requirement, and the decision is more than
four decades old.
• The most controversial part of Manson is its rejection of
the reasoning of the Court of Customs and Patent
Appeals. Assume that a firm is in the business of
producing chemicals; it has no idea why its customers
buy the chemicals. Can it patent an improvement in its
processes for producing the chemicals?
• The less controversial part of Manson is its holding that a
chemical will not be viewed as having a utility merely
because it is the subject of scientific inquiry.
• Remember: Manson is a case about NO chemical utility.
• The Court is concerned that wide-ranging product and
process claims inhibit further research. We saw similar
concern in Morse and The Telephone Cases.
• Note that the Court required Manson to have come up
with a utility for the steroid as of his date of invention.
Brenner v. Manson
• Narrow reading: Even on the assumption that the
process would be patentable were respondent to show
that the steroid produced had a tumor-inhibiting effect in
mice, we would not overrule the Patent Office finding
that respondent has not made such a showing.” Manson
failed to show “sufficient likelihood” that the steroid would
have similar tumor-inhibiting effects.
• Broader reading: The patent must show a “substantial
utility” --- i.e., that a “specific benefit exists in currently
available form.”
• Concern: “It may engross a vast, unknown, and perhaps
unknowable area. Such a patent may confer power to
block off whole areas of scientific development, without
compensating benefit to the public.”
• Rejects a broad reading of Story’s dicta. Lowell v. Lewis
does not state the only test of utility.
Brenner v. Manson
• Big question: Why are games and amusements
patentable and yet not compositions of matter
that are the subject of scientific curiousity? Do
we value Trivial Pursuit more than scientific
pursuit?
• Best Answer: The value of the game is unlikely
to be improved by additional inventive work, so
the inventor will reap the market value of the
game. The scientific curiosity is more likely to
be improved by subsequent discoveries, and
those future inventors will have to share their
royalties with the first patentee. Thus, permitting
a patent on the scientific curiosity is more likely
to lead to excessive reward for the patent
holder.
In re Brana
• Notably Brana did not cite the Supreme Court’s Manson decision, even
though the PTO appeared to have been following the teaching of
Manson that the subjects of active research are not patentable.
• Can Brana and Manson can be reconciled?
– Yes. Manson involved a case of no utility. In Brana, some utility was
found for this very drug (it had a proven anti-tumor effect in mice).
– The tenor of Brana and Manson seem quite different.
• What is the utility in Brana? Is it curing mice of tumors? Or is it curing
humans?
– The opinion seems to suggest that curing mice of artificial tumors is
a “sufficiently specific use.” See p. 242. It is important, however, that
this artificial disease was “originally derived from lymphocytic
leukemias in mice.”
– By comparison, that the PTO had rejected the application for failing
to disclose a “practical utility (i.e, antitumor activity in humans).
– Also, on page 243, the court states that the PTO did not meet its
burden of challenging a “presumptively correct assertion of utility”
because the PTO’s arguments would be “relevant only if applicants
must prove the ultimate value in humans of their asserted utility.”
In re Brana
• Structure of Brana opinion: 1) Murine cure is “sufficiently specific
utility”; 2) PTO has not demonstrated that the utility is “inherently
unbelievable”; 3) even if PTO did overcome its initial burden, the
applicants submitted sufficient evidence to convince a person of skill in
the art of the asserted utility.
• Why didn’t the court rely on the in vitro tests against human tumor
cells?
– Possibly, the court wanted to make clear that an murine antitumor
effect was a sufficient practical utility; effectiveness in humans did
not have to be proven.
– Proof of antitumor activity in vitro against human tumor cells does
really show much about the therapeutic value of the substance.
Many substances that kill cells in vitro may also kill the entire
organism and thus have no value.
• Can an inventor file for a patent and continue testing in hopes of
showing a utility by the time the examiner starts to ask questions?
– No! Manson makes clear that the identification of a utility is part of
invention and must be satisfied by the filing date at the latest!
– While the assertion of utility must be made in the specification, the
proof to overcome the PTO’s disbelief can be submitted after filing.
See note 16 on p.244.
Ex parte Fisher
• Claim is in Parke-Davis form.
• What is the alleged utility in Fisher?
– Polymorphism? (Mutation or difference in
genetic structure.)
– Probe – useful in looking for promoter active
in anthesis? (Compare Brenner v. Manson)
• Compare to microscope – why is that useful?
• What’s the cost of allowing these DNA fragments
to be patented? How will resources be
misallocated if the PTO allows these patents?
• Paperweight Example: Are new materials for
paperweights not patentable?
– No! When would they be patentable?
Ex parte Fisher
• Note also “comprising” language”. Is this inconsistent
with “substantially purified”?
• Why are patents being sought on so many DNA
sequences? Note: over 32,000 sequences here!
– One big reason: In re Deuel has interpreted the
nonobviousness doctrine such that, even if the
technique for isolating a new chemical composition is
obvious, the chemical composition is nonobvious if its
structure is nonobvious. This ruling leads to patenting
“machines” which can automatically isolate DNA
fragments.
– Is this invention?
• 112 rejections:
– Enablement – contingent on utility holding.
– Written description – satisfied.