Utility
• Two Main sets of Issues
– Timing: WHEN in the sequence of events leading up to a product innovation should a patent application be permitted?
– WHAT TYPES of invention are so “useless” they do not deserve a patent?
Traditional Chemical/Pharmaceutical Research
Development ofOrganic Molecules
In vitro Testing
In vivo Testinganimals
In vivo Testinghumans
Number of compounds assessed
Development ofOrganic Molecules
In vitro Testing
In vivo Testinganimals
In vivo Testinghumans
Number of compounds assessed
Cost ofResearch
New compound
High biological activity
Structural similarity to
useful products
Reasonable correlation
between results and utility
Results in animals
Results in humans
Traditional Chemical/Pharmaceutical Research
Satisfies Utility Requirement
Brenner v. Manson, 383 U.S. 519 (1966)
An adjacent homologue of the steroid yielded by the process has been demonstrated to have tumor-inhibiting effects in mice.
• failed to disclose a sufficient likelihood that the steroid yielded by the process would have similar tumor inhibiting characteristics.
• high unpredictability of compounds in the field.
Brenner v. Manson, 383 U.S. 519 (1966)
“The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention of substantial utility. Unless and until a process is refined and developed to this point – where specific benefit exists in currently available form – there is insufficient justification for permitting an applicant to [monopolize] what may prove to be a broad field.”
Brenner v Manson
• This is not to say that we mean to disparage the importance of contributions to the fund of scientific information short of the invention of something "useful," or that we are blind to the prospect that what now seems without "use" may tomorrow command the grateful attention of the public.
Brenner, cont’d
• But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. "[A] patent system must be related to the world of commerce rather than to the realm of philosophy. * * *"
Project Initiation: Pure Concept Stage
Promising Experimental Results: Brenner v. Manson
Promising Clinical Results, e.g., in vitro
Working Model or Prototype; in vivo effectiveness
Some quick economics
Terry L. Anderson & Peter J. Hill, The Race for Property Rights, 33 J.L. & Econ. 177 (1990)
David D. Haddock, First Possession Versus Optimal Timing: Limiting the Dissipation of Economic Value, 64 Wash. U. L.Q. 775 (1986).
Dean Lueck, The Rule of First Possession and the Design of the Law, 38 J.L. & Econ. 393 (1995)
In re Fischer
• Claim 1
– “Substantially purified” – echoes of Parke-Davis
– “Selected from the group consisting of . . .”
•What is this claim form?
Markush Group
• “An article of clothing, selected from the group consisting of–Shirts–Shoes–Pants”
• “A chemical entity selected from the group consisting of–Carbon–COOH–CH(6)”
Expressed Sequence Tags
Most DNA: Unknown Function
The good stuff: DNA that codes for a protein
EST: Short “Tag”
Multiple Biotechnology Patents: SNP/EST Example
C Owns SNP_3/EST_3
A Owns SNP_1 (Or EST_1)
B Owns SNP_2/EST_2
Fischer
• What utilities are claimed? – P. 3
– “determining a relationship between a polymorphism and a plant trait”
– “isolating a genetic region . . . Or mapping”
– “determining [protein] levels . . .”
Fisher - holding
–Immediate utility is to conduct further experiments
–Too attenuated under Brenner and Brana
“Expressed Sequence Tag” Patents: policy issues
• Bad Idea! Eisenberg & Merges opinion letter, 1995
• Patent law’s “utility requirement” bars these patents
• Why? “Rent Seeking” Dominates incentive motive; Transaction Costs a Major Issue
Main Trouble Areas
• No known utility (“perpetual motion machines”)– Newman v. Quigg, 877 F.2d 1575 [ 11 USPQ2d 1340]
(Fed. Cir. 1989) (claims to a perpetual motion machine ruled inoperable)
• Malicious utility– a "useful" invention is one "which may be applied to
a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant"
Justice Story View
• Appendix, Note on the Patent Laws, 3 Wheat. 13, 24. See also Justice Story's decisions on circuit in Lowell v. Lewis, 15 Fed. Cas. 1018 (No. 8568) (C. C. D. Mass.), and Bedford v. Hunt, 3 Fed Cas. 37 (No. 1217) (C. C. D. Mass.).