Utility
9.4.2012
Patent Law
Prof Merges
Utility – Section 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"
Third major trouble area
• Chemical, pharmaceutical, and biotechrelated inventions
• Why? The nature of chemistry-related
research
– Structures (molecules) and their uses . . .
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 (Supreme Court
1966)
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
51 F.3d 1560
C.A.Fed.
1995
Brana, cont’d
R1-R4: Markush
groups
N: Markush group
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.
Promising
Experimental
Results: Brenner
v. Manson
Project
Initiation:
Pure Concept
Stage
Working Model
or Prototype; in
vivo
effectiveness
Promising
Clinical
Results, e.g.,
in vitro – In re
Brana
In re ‘318 Patent Litigation
• 518 F3d 1317 (Fed Cir 2009)
• Distnguishing Brana
• Only a suggestion to do animal testing, and
evidence of in vitro results from a structurally
similar compound
[N]either in vitro test results nor animal test
results involving the use of galantamine to
treat Alzheimer's-like conditions were
provided. The results from the ′318 patent's
proposed animal tests of galantamine for
treating symptoms of Alzheimer's disease
were not available at the time of the
application, and the district court properly
held that they could not be used to establish
enablement. – 583 F.3d at 1324
The Oklahoma Land Rush – A Good Use of
Resources?
Mining
Claim
Systems:
Requirements 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)
Ex Parte Fischer
• Major case involving “expressed sequence
tags”
• Utility the key issue: did inventors
demonstrate patentable utility as of the filing
date of the patent?
Fischer claim 1: p. 241
A substantially purified nucleic
acid molecule that encodes a
maize protein or fragment
thereof comprising a nucleic acid
sequence selected from the
group consisting of SEQ ID NO: 1
through SEQ ID NO: 5.
Ex Parte Fischer
• Claim 1, Casebook p. 241
– “Substantially purified” – echoes of ParkeDavis
– “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
A Owns
SNP_1 (Or
EST_1)
B Owns
SNP_2/EST_
2
C Owns
SNP_3/EST_3
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: policy issues
• Bad Idea! Eisenberg & Merges opinion letter,
1995
• Patent law’s “utility requirement” bars these
patents
• Why? “Capturing someone else’s investment”
dominates incentive motive; Transaction
Costs a Major Issue
Transaction Costs
B
C
A
Firm E
End Product
Transaction Costs II
B
A
End Product
C
End Product
End Product
Capturing Someone Else’s
Investment
• Disproportionate reward
• The Proportionality Principle in
IP Law