Utility and Enablement - Berkeley Law

Utility and Enablement - Berkeley Law

Utility Intro to IP Prof Merges Jan. 19, 2010 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 of Organic Molecules In vitro Testing In vivo Testing animals Number of compounds assessed In vivo Testing

humans Traditional Chemical/Pharmaceutical Research New compound High biological activity

Reasonable Structural correlation similarity to between results useful products and utility Results in animals

Results in humans Satisfies Utility Requirement Cost of Research Development of Organic Molecules In vitro Testing

In vivo Testing animals Number of compounds assessed In vivo Testing humans 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, 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. * * *" Harlan dissent To encourage one chemist or research facility to invent and disseminate new processes and products may be vital to progress, although the product or process be without utility as the Court defines the term, because that discovery permits someone else to take a further but perhaps less difficult step leading

to a commercially useful item. What is missing from the Harlan view? The idea that patents, and IP generally, are only one factor that affects invention, dissemination, and commercialization Rewards and norms in the practice of scientific research affect research and disclosure

The Contemporary View Patents may interfere with disclosure as much as they facilitate it IP rights may squeeze out research and disclosure that would occur in their absence Scholarly support Chris Sprigman and Kal Raustiala, "Where IP Isnt, Va. L. Rev. In Brief (2007).

Work by Rebecca Eisenberg Working Model or Prototype; in vivo effectiveness Promising Experimental Results: Brenner

v. Manson Project Initiation: Pure Concept Stage Promising Clinical Results, e.g.,

in vitro 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)

Terry L. Anderson Montana State; Hoover Institution David Haddock, Northwestern Law School In re Fischer

Claim 1 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 protei 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 . . .

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 laws 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" Juicy Whip You can see these themes in this case Beneficial utility

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.). Beneficial (Moral) Utility Cubic zirconium

Gold Leaf 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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