Jan. 28, 2008
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
• 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.
• 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
Decided March 30, 1995
• 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
-- 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?
• “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)”
• 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
– Too attenuated under Brenner and Brana
“Expressed Sequence Tag” Patents
• Bad Idea! Eisenberg & Merges opinion letter,
• Patent law’s “utility requirement” bars these
• Why? “Rent Seeking” Dominates incentive
motive; Transaction Costs a Major Issue