Utility and Enablement

Intro to IP – Prof Merges

Jan. 20, 2009

Jan. 20, 2009: End of the Torture

Utility – Section 101

Whoever invents and new AND USEFUL

machine, manufacture, . . .

Utility

• Two Main sets of Issues

– Timing: WHEN in the sequence of events leading up to a product innovation should a patent application be permitted?

– WHAT TYPES of invention are so “useless” they do not deserve a patent?

Traditional Chemical/Pharmaceutical Research

Development ofOrganic Molecules

In vitro Testing

In vivo Testinganimals

In vivo Testinghumans

Number of compounds assessed

Development ofOrganic Molecules

In vitro Testing

In vivo Testinganimals

In vivo Testinghumans

Number of compounds assessed

Cost ofResearch

New compound

High biological activity

Structural similarity to

useful products

Reasonable correlation

between results and utility

Results in animals

Results in humans

Traditional Chemical/Pharmaceutical Research

Satisfies Utility Requirement

Brenner v. Manson, 383 U.S. 519 (1966)

An adjacent homologue of the steroid yielded by the process has been demonstrated to have tumor-inhibiting effects in mice.

• failed to disclose a sufficient likelihood that the steroid yielded by the process would have similar tumor inhibiting characteristics.

• high unpredictability of compounds in the field.

Brenner v. Manson, 383 U.S. 519 (1966)

“The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention of substantial utility. Unless and until a process is refined and developed to this point – where specific benefit exists in currently available form – there is insufficient justification for permitting an applicant to [monopolize] what may prove to be a broad field.”

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. * * *"

Project Initiation: Pure Concept Stage

Promising Experimental Results: Brenner v. Manson

Promising Clinical Results, e.g., in vitro

Working Model or Prototype; in vivo effectiveness

The Oklahoma Land Rush – A Good Use of Resources?

Mining Claim Systems:

Require-ments 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)

Terry L. Anderson – Montana State; Hoover Institution

David Haddock, Northwestern Law School

In re 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, 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

C Owns SNP_3/EST_3

A Owns SNP_1 (Or EST_1)

B Owns SNP_2/EST_2

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 . . .”

Fisher - holding

–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? “Rent Seeking” Dominates incentive motive; Transaction Costs a Major Issue

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.).

“The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to

satisfy the statutory requirement of utility.”

Cubic zirconiumGold Leaf

Juicy Whip, Inc. v. Orange Bang, Inc., U.S.P.Q.2d 1700 (Fed.Cir. 1999)

Beneficial (Moral) Utility

U.S.C. § 112: ¶ 1

Disclosure/Enablement, § 112

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Base, with passageway

U-shaped bar

Cutting element attached to bar

Rotating handle at end of barCLAIM 1:ELEMENTS

Enablement/Written DescriptionCheese Slicer Specifications, ¶ X

“The handle may be turned to ... draw the cutting elementtaut so that it may properly perform its cutting function.”

Rotating handle at end of bar

Cutting element attached to bar

Base, with passageway

U-shaped bar

Claim Elements

Rotating handle at end of bar

The Incandescent Lamp Patent

Incandescing conductor

Bamboo discovered as an incandescing conductor.

Claims – page 262

1. An incandescing conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe shape, substantially as hereinbefore set forth.

System claims

2. The combination, substantially as hereinbefore set forth, of an electric circuit and an incandescing conductor of carbonized fibrous material, included in and forming part of said circuit, and a transparent hermetically sealed chamber in which the conductor is enclosed.

Narrow “picture” claim – p. 263

3. The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described.

Sawyer and Man Commercial product

• Is this relevant to question of infringement in this case?

Edison Patent

• Is this relevant to this case?

• Is it a defense for McKeesport Light that it has a license from Edison?

Overlapping and Blocking Patents

• Quite possible for defendant to have patents that plaintiff infringes

• Irrelevant to plaintiff’s cause of action

What is defendant’s defense?

“Is the complainant entitled to a monopoly of all fibrous and textile materials for incandescent conductors?”

If the patentees had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials, such as minerals, etc., and such quality or characteristic adapted them peculiarly to incandescent conductors, such claim might not be too broad.

Instead of confining themselves to carbonized paper, as they might properly have done, and in fact did in their third claim, they made a broad claim for every fibrous or textile material, when in fact an examination of over six thousand vegetable growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. -- page 266

Policy rationale

Was everybody then precluded by this broad claim from making further investigation? We think not.

Edison’s experiments – relevance?

• How does this evidence bear on the question of the proper scope of Sawyer and Man’s patent?

Page 268

[H]ow would it be possible for a person to know w hat fibrous or textile material was adapted to the purpose of an incandescent conductor, except by the most careful and painstaking experimentation?

If … as before observed, there were some general quality, running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave it a peculiar fitness for the particular purpose, the man who discovered such quality might justly be entitled to a patent; but that is not the case here.

Sawyer and Mann PatentClaimed: “All Fibrous and textile material” (6,000 plus embodiments)

Enabled: Carbonized paper, plus?