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Utility – Section 101
101. Whoever invents and new AND USEFUL machine,
manufacture, . . .
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.).
Brenner v Manson, p 229
• 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. * * *"
In re Brana 34 U.S.P.Q.2d 1436
C.A.Fed. Decided March 30, 1995
Brana, cont’d
N: Markush group
R1-R4: Markush groups
Brana cont’d: p. 245• FDA approval, however, is not a prerequisite for finding a
compound useful within the meaning of the patent laws. Usefulness in patent law, and in particular in the context of pharmaceutical inventions, necessarily includes the expectation of further research and development.. Were we to require Phase II testing in order to prove utility, the associated costs would prevent many companies from obtaining patent protection on promising new inventions, thereby eliminating an incentive to pursue, through research and development, potential cures in many crucial areas such as the treatment of cancer.
-- 34 U.S.P.Q.2d 1436, 1443
Project Initiation: Pure Concept Stage
Promising Experimental Results: Brenner v. Manson
Promising Clinical Results, e.g., in vitro – In re Brana
Working Model or Prototype; in vivo effectiveness
The Oklahoma Land Rush – A Good Use of Resources?
Mining Claim Systems:
Require-ments and Timing Issues
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)
Terry L. Anderson – Montana State; Hoover Institution
David Haddock, Northwestern Law School
Ex Parte 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 . . .”
Fischer - holding
• P 22
– Immediate utility is to conduct further experiments
– Too attenuated under Brenner and Brana
“Expressed Sequence Tag” Patents
• 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
Transaction Costs
End Product
Firm E
A
B
C
Transaction Costs II
A
B
C
End ProductEnd ProductEnd Product