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					  Utility

Jan. 28, 2008

Prof Merges
    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
• 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
• 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
          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)
               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,   • “A chemical entity
  selected from the            selected from the
  group consisting of          group consisting of
   – Shirts                     – Carbon
   – Shoes                      – COOH
   – Pants”                     – CH(6)”
                      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

				
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