I. Patent Requirements
A. Utility
1. § 101.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
2. Something not injurious or immoral meets the utility requirement. It just must be different, not mischievous.
a) Lowell v. Lewis, 1917, p. 134
The product or process must be useful, not a mischievous invention. The court rejects the argument that a pump must be better somehow, only that it must not be frivolous or injurious. “Useful” is used incidentally in § 101.
Class Notes
Utility here is contrasted with things injurious or immoral to society (and nothing more than that).
Book Notes
Utility isn’t concerned with something better. (That’s for other requirements to address.)
3. A product designed to look like another is not barred by utility, even if deceptive.
a) Juicy Whip v. Orange Bang, 1999, p. 136
Options are to mix ahead of time, and the juice is visually appealing but must be cleaned and filled frequently (pre-mix), or to mix when ordered, and the visual appeal is missing but it avoids bacteria (post-mix). Juicy Whip invented a post-mix dispenser with a display that to look like a pre-mix dispenser, and sued Orange Bang for infringing patent. Orange Bang claims invalidity, lacking utility. “Useful” just means some identifiable benefit. Having one thing imitate another is a benefit. Concerns for deceptive trade practices are addressed in other agencies, not the PTO. Congress could have added “deception” as a bar, but have not.
Class Notes:
While deception could be considered mischievous, barred under Lowell, the product here is patentable. Deception doesn’t render it not patentable. Things like imitation leather and cubic zirconium are analogous here. If the consumer knows it’s imitation leather, they’re not deceived.
Inoperable inventions are always barred inventions.
4. Biotech specific, stricter. A patent is not a hunting license – should not be granted for the research alone unless the result has been shown to be useful; nor a reward for the search, but is compensation for the successful conclusion. (policy consideration for the broad monopoly)
a) Brenner v. Manson, 1966, p. 141
Ringold and Rosenkranz received a patent in 1959 for a novel process to make known steroids, claiming priority date in 1956. Manson applied for a patent on the same process in 1960, claiming priority date prior to 1956, but was rejected because he did not claim a use for the product. The court rejects the contention that utility is merely achieving the intended result and is not detrimental. Monopoly should not be granted unless the product reduced by a process has been shown to be useful. “A patent is not a hunting license.” So since Manson claimed no usefulness, even though it subsequently was determined to be useful, Manson cannot obtain the patent.
No test showing that the steroid in question here would reach the same result as the known steroid. This was not shown to have the same tumor inhibiting effects.
Dissent:
This discourages research. Processes that may be a step in the research process is useful in itself.
5. (Ignoring Brenner) A product/process viewed as useful by a POSITA meets utility; there is an expectation of future research/development. Animal testing meets
n itself. There’s also an assertion that the ESTs can identify polymorphisms or isolate promoters, but no evidence of this. These ESTs do nothing that any other EST would not do.
Dissent:
ESTs are research tools. They are useful to isolate protein-encoding genes. Requiring that there be a known end for the tool to be patentable would hider future research. It would be impossible to determine what is “substantial” and what is “insubstantial” until the research has been completed.
Class Notes:
ESTs have no function on their own, and the function of the parent gene may not be known yet. Now, credible utility is not enough. It has to be credible, substantial, and specific. Fisher argues that “utility” should mean that it does what it is supposed to do. There’s nothing about Fisher’s utilities that are specific to his ESTs. These are all things that can be accomplished by other things. Lowell says that you need general utility, not specific utility.
B. Novelty – Statutory Bar, Public Use, On Sale, or Printed Publication and Territoriality, Abandonment, & Delayed U.S. Filing
1. § 102(b)
“A person shall be entitled to a patent unless – the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”
