Select Page

Temple University School of Law
Rabinowitz, Aaron B.

Patent Law



Origins of the Patent System


Early America

Traditions from England carried over

Initial patent system was more informal and was run by the states

1787 – Constitutional Language (giving congress the ability if not the duty to . . .)

The Congress shall have power . . . to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; . . . [and] to make all Laws which shall be necessary and proper for carrying into Execution the foregoing powers.

Broken down as two grants of power

Copyright system

Patent system


Commission on Revision of the Federal Court Appellate System (Hruska Commission).

Revealed significant forum shopping issues on patents

Commission advised against the “Federal Circuit”

Court of Claims and Court of Customs and Patent Appeals into a single Appellate Court with national jurisdiction over all patent appeals.

Federal Circuit

Jurisdiction over more than 10 categories of appeals including patents




Government Contracts

Rarely sits en banc

When it does it has the ability to overrule prior precedent.

When in three judge panels it has no ability to depart from prior precedent

What rights does the patent give you

The right to exclude other from using your invention

Doesn’t necessarily give you the right to use it

May be a dominating patent

What can you do with the patent

Sell it

License it

It is a business tool, there are a lot of things you can do with a patent

What might a patent incentivize

Incentive to promote scientific progress

Incentive to invest in research

Without patents there would be a lot of piggybacking

Incentives giving it to the public

Incentive for firms to innovate and introduce the patent to the market

Trolls and non-practicing entities don’t really contribute but go around draining resources from other companies that are actually developing something.

Facilitates innovation

Improves efficiency by putting patent to use

Efficiency in R&D, won’t duplicate stuff that has already been patented

Can allocate resources on bringing things to the public


Proper subject matter






This requirement generally finds it origin at in §101, which requires that an invention be useful.

Frequency of Use

Rarely invoked because there is not really an incentive to patent something that is useless, nor is there incentive to infringe something that his useless.

Policy Questions

What does useful mean?

Does it mean superior to other products? No.

Does it just need to have some practical purpose? This seems to be the general rule.

Can leading to other inventions make something useful? Maybe, watch out for in chemical.

Progression of Utility Requirement

Lowell v. Lewis (Justice Story)


All the law requires is that the invention should not be:


Injurious to

Well being of society

Good policy

Sound morals

Inserted in contrast to “mischievous” or “immoral”

i.e. – poison people or promote debauchery

Need not be an improvement over the existing state of the industry.


Useful is not that big a deal because if something isn’t useful it will “silently sink into contempt and disregard” in other words people won’t use it.

Story’s opinion enforces the idea that we are not necessarily looking for something “better” in the patent system, just something different.

Juicy Whip v. Orange Bang

Trial court said there could be no patent as the invention aws designed to defraud customers

JW has a “post mix” (meaning that they were mixed coming out of the containers, not coming out of the tank) beverage dispenser with a simulated display of the beverage.

Benefit being that you have the more sanitary post-mix bev while encouraging impulse buys


Utility threshold is not high

Has utility if “capable of providing some identifiable benefit”

Something will have utility if it imitates something that it is not.

It is not the PTO’s job to deal with food safety or deceptive trade practices (FTC and FDA do that). This may not even be a bad type of fraud, better for customer.

Congress knows how to declare items unpatentable and has done so (nuclear weapons)


D court relied on two older cases (spotted tobacco and seamless stocking which were found unpatentable). Court will not follow these

Lists variety of items which imitate things they are not

CZ (diamond), Synthetic Fabrics, Gold leaf, Imitation leather

Producing imitation grill marks (patented, Subway chicken)

Much of the value is that the product appears to be something it is not

Utility in Biotech – Specific Utlitiy

Tricky in the biotech and chemical arts because, unlike mechanical and others where things are typically invented going towards a particular use, chemicals may be synthesized without knowledge of their practical use.

Inventor may have little more than an educated guess about what the item does

Brenner v. Mason (Brenner is Comm’r of Patents)


’57 patent by Ringold for process of making certain known steroids

’60 Manson applied for a patent on a similar process (said he had discovered before the priority date associated with the ’57 application)

Requested an interference to determine priority

Needs to show a patentable invention to get an interference


May only patent that which is useful, §101


Seemed to move away from general usefulness requirement which was once the law

Allowing: “useful to chemists doing research on steroids”

A process patent which is in the chemical field and has not been developed and pointed to the degree of specific utility creates a monopoly of knowledge which should be granted only if clearly commanded by statute

Rationale: Until the process claim can be reduce to production of a product known to be useful the limits of the monopoly are not clearly defined.

May therefore serve to block progress

Don’t want the patent to serve as a hunting license

Mere relation to a compound know to be useful will not be enough unless there is identical performance of the compound. Homologues were “highly unpredictable”

Two prongs

Specific utility

You need to prove an actual benefit readily available

Make sure that whatever the utility is, it is disclosed

Substantial utility

Requirement of quid pro quo

In Re Fisher (2005)


PTO rejected patent as unpatentable for lack of utility


Claimed uses were not specific to the claimed EST

Generally applicable to all ESTs

Lacked substantial utility because there was no known use for proteins produced as a byproduct of the use of the ESTs


Plaintiff was trying to patent an “expressed sequence tag” or EST

Helpful for identifying the presence of similar DNA sequences

Plaintiff says that can be used as



Helpful in research

Use as molecular marker for mapping maize genome


Utility can not be similar to that of any similar class of molecule

Ex. All ESTs are useful for identification purposes.

All EST serve a mere research intermediaries, a step towards and ultimate invention.

When an invention is merely a starting point for further research, not the end point of research they may not be patented.

When your claims for usefulness are just a “laundry list” of research plans you may be in trouble

Must have a SPECIFIC and SUBSTANTIAL utility to satisfy


Interchangeable with “practical utility” or “real world” utility

One skilled in the art can use a claimed discovery in a manner which provides some immediate benefit to the public

Useful to public as disclosed in current form

Defined by court

to satisfy the “substantial” utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public

The fact that it is only useful as a research tool might be a warning that it is not substantially useful.


Must disclose a use no

Process patent for bonding metal to metal

Meduna the original patentee had used the patented process to created products that were sold on the open market.

Commerc. use, but only products, which gave no indication of the process, sold

The trial court also found that the process itself never actually became public though, this it held that it was a secret use not preventing patentability.


The only difference between non-informing and secret uses is that the patentee intentionally tries to keep the invention secret.

The secret exploitation of an invention (usually it will be a machine or process) constitutes a public use.


The inconsistency of a providing a patent monopoly the user after they have already exploited the invention via trade secret.

A patentee ‘is not allowed to derive any benefit from the sale or use of his machine, without forfeiting his right, except within one year prior to the time he makes his application”

In other words, exploiting a process or machine in secret for its product starts the clock ticking.

An inventor may, for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others – perhaps questionable. Only use it if you need it.


In Peerless, we misapprehended the theory on which the prior use by an inventor forfeits his right to a patent.

Peerless confused two separate doctrines: (1) The effect upon his right to a patent of the inventor’s competitive exploitation of his machine or of his process (don’t wan to let people do this); (2) the contribution which a prior use by another person makes to the art (usually you can get a patent if quid pro quo).

Both do indeed come within the phrase, ‘prior use’; but the first is a defense for quite different reasons from the second. It had its origin- at least in this country- in the passage we have quoted from Pennock. It is true that for the limited period of [one] year[] he was allowed to do so, possibly in order to give him time to prepare an application; and even that has been recently cut down by half. But if he goes beyond that period of probation, he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment, even without exploiting the invention at all

Experimental Use

City of Elizabeth


Whether or not inventor’s use was a public use. Was it in public use or on sale more than one year before application for patent.


Key in determination of whether something is a public use is the nature of the use.

Totality of circumstances in which the product was used.

If use is experimental it will not be public use as a matter of law. NEGATION

Meaning there is a single question, was it public use, and exp. Won’t qualify.

May be done by the inventor or any other person under his control.

Pavement, by nature only amenable to public experimental use.

That the public gets incidental benefit will not be a deal-breaker

But if the inventor allows his machine to be used by other persons generally (use without limitation), either with or without compensation, or if it is, with his consent, put on sale for such use, then it will be in public use and on public sale, within the meaning of the law.

It is not a public knowledge of his invention that precludes the inventor from obtaining a patent for it, but a public use or sale of it.

So the public can know about the invention through the experimentation, but as long as it is not being use publically (i.e. not experimentation, we will be ok)

Rationale: When inventor is making a bonafide attempt at experimentation, it can’t be said that he is inappropriately delaying the patenting of the invention

We want people to perfect their inventions in these cases they are not exploiting the invention.