Utility and Enablement

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Utility and Enablement

• Intro to IP Prof Merges
• Jan. 20, 2009

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Jan. 20, 2009 End of the Torture
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Utility Section 101

• Whoever invents and new AND USEFUL machine,
  manufacture, . . .

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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?

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Traditional Chemical/Pharmaceutical Research
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Traditional Chemical/Pharmaceutical Research
Satisfies Utility Requirement
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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.
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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.
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Biotechnology
Problem Express Sequence Tags (ESTs)
typically used as molecular probes to search
for genes
physiological function usually not known
A claimed invention must have specific,
substantial, and credible utility
excludes throw away, insubstantial, and
nonspecific utilities e.g., complex
invention used a landfill material
Specific more than a random fragment of nucleic
acid
excludes gene probes, chromosome markers, or
other basic research tools unless inventor
identifies particular gene or chromosome targets
diagnostic tools not specific unless inventor
specifies the condition that it diagnoses
Substantial real world use e.g., link to a
disease
a gene (or tool to identify the gene) is not
patentable until its physiological use is known
Credible whether a person of ordinary skill in
the art would accept that the invention is
currently available for its purported use
Unresolved Issues
How closely an EST must correlate with a
particular physiological condition
speculation standard
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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.

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Brenner, contd

• 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. "

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Working Model or Prototype in vivo effectiveness
Promising Experimental Results Brenner v. Manson
Promising Clinical Results, e.g., in vitro
Project Initiation Pure Concept Stage
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The Oklahoma Land Rush A Good Use of Resources?
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(No Transcript)
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(No Transcript)
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Mining Claim Systems Require-ments and Timing
Issues
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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)

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Terry L. Anderson Montana State Hoover
Institution
David Haddock, Northwestern Law School
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(No Transcript)
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In re Fischer

• Claim 1
• Substantially purified echoes of Parke-Davis
• Selected from the group consisting of . . .
• What is this claim form?

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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)

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Expressed Sequence Tags
Most DNA Unknown Function
EST Short Tag
The good stuff DNA that codes for a protein
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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
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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 . . .

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Fisher - holding

• Immediate utility is to conduct further
  experiments
• Too attenuated under Brenner and Brana

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Expressed Sequence Tag Patents policy issues

• Bad Idea! Eisenberg Merges opinion letter, 1995
• Patent laws utility requirement bars these
  patents
• Why? Rent Seeking Dominates incentive motive
  Transaction Costs a Major Issue

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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"

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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.).

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Beneficial (Moral) Utility
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.
Juicy Whip, Inc. v. Orange Bang, Inc., U.S.P.Q.2d
1700 (Fed.Cir. 1999)
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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.
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(No Transcript)
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CLAIM 1 ELEMENTS
Rotating handle at end of bar
U-shaped bar
Cutting element attached to bar
Base, with passageway
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Enablement/Written Description
Cheese Slicer Specifications, X
The handle may be turned to ... draw the cutting
element taut so that it may properly perform its
cutting function.
Claim Elements
Rotating handle at end of bar
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
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The Incandescent Lamp Patent
Incandescing conductor
Bamboo discovered as an incandescing conductor.
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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.

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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.

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Narrow picture claim p. 263

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

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Sawyer and Man Commercial product

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

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Edison Patent

• Is this relevant to this case?
• Is it a defense for McKeesport Light that it has
  a license from Edison?

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Overlapping and Blocking Patents

• Quite possible for defendant to have patents that
  plaintiff infringes
• Irrelevant to plaintiffs cause of action

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What is defendants defense?

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

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• 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.

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• 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

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Policy rationale

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

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Edisons experiments relevance?

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

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Page 268

• How 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?

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• 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.

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Sawyer and Mann Patent
Claimed All Fibrous and textile material
(6,000 plus embodiments)
Enabled Carbonized paper, plus?