#16472 - Patentability - Intellectual Property (IP) Law

10. Elements of Patentability

MML 233-275; 35 U.S.C. §§ 101, 112

Elements of Patentability

1. Novelty

2. Non-obviousness

3. Utility: specific and substantial

4. Disclosure: (i) enablement; (ii) written description; (iii) best mode

5. Subject Matter

3) Utility

• Statutory Basis for utility requirement

  • § 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 therefor…”

  • S. 112(a) [see disclosure]

1. Operability: Does it do what it claims to do?

   • It works (i.e. Newman and perpetual motion machine)

   • If it does not operate to produce the results claimed by the patent applicant, it is not a ‘useful’

2. Beneficial Utility: Does it produce some social benefit (or at least no social harm)?

   • Immoral invention: patent denied for inventions that could be used only to defraud

     • Would not use patent law to regulate immoral behaviour

     • Getting a patent is not giving someone’s right to do something, but right to exclude other people form doing that

     • E.g. getting a patent on ban consumer deception doesn’t mean you have the right to do it only a right to stop others form copying their design

     • Illegality is different form immorality: e.g. if the use is illegal, patent would be declined [but people would not apply/ sue on patent that is illegal in some areas, as that would attract unwanted attention]

   • Juicy Whip v. Orange Bang (Fed. Cir. 1999)

     • Facts: Juice dispensing system that only appear to circulate fresh juice, but actually circulate an undrinkable liquid, while the tanks hidden underneath the glass bowl display dispensed the actual justice (inventor claimed this arrangement reduce maintenance costs and avoid contamination)

     • Held: Patentable substantial, operational, beneficial utility

       • No basis in s.101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool the public

       • 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, e.g. imitation gold leaf, synthetic fabrics, imitation leather all designed to look like the real thing

       • PTO/ courts are not arbiters of deceptive trade practices beneficial utility is forcing patent officers to do what they are not capable of doing

3. Practical or Specific Utility: is the utility identified by the inventor a ‘substantial’ and ‘specific’ utility? (Brenner, Fisher)

   • Specific: “provide a well-defined and particular benefit to the public

     • A statement that a composition has an unspecified “biological activity” that may be useful in treating unspecified disorders,

     • A process or a product, which has no known use or is only useful as an object of scientific research is not eligible for patent because it is not "useful."

     • Something that the invention is uniquely specialized to do, rather then something that lots of other things will do equally well –no throwaway or generic uses

     • Federal Circuit does not categorically rule out research tools as patentably useful matter

   • Substantial: show that the claimed invention has a significant and presently available benefit to the public, not that it may prove useful at some future date after further research.

     • Utilities that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use are not substantial utilities.

• Policy

  • Incentive: if no patent protection, people may be reluctant to create a process

  • Trade secret: companies may protect inventions as trade secrets to hide it form the public if they know they will not get a patent. This will lead to duplicative research.

  • Windfall: Patentee patents something which may cover later useful invention don’t want the patentee to gets the reward

  • Waste resources on PTO that can be better spent on useful patent applications

  • Patent is not a hunting license: granting patent may discourage others to research on downstream development, higher standard of utility forces people to narrow their claims + test of utility will delay patentability, pushing it further downstream

    • Better to leave things in public domain (Fortis).

    • [counter: someone who gets a patent will be incentivized to find a concrete use as soon as possible to make money]

  • Boundary: utility test allows us to know the boundary of the claim (Brenner)

• Brenner v. Manson (Supreme Court 1966):

  • Facts: Patent Office rejected P’s patent application for failing “to disclose any utility for” the chemical compound produced by the process. P argued that that steroids of a class which included the compound his product produced were undergoing screening for possibly reducing tumors in mice, and that a homologue close to his steroid had proven effective in doing so.

    • November 1956: Ringold and others publish an article revealing that a number of compounds, including the steroid at issue, were being tested for tumor-inhibiting effects. The article also shows that a compound closely related to the relevant steroid was effective in inhibiting tumors.

    • December 17, 1956: Ringold and Rosenkranz file a patent application seeking a patent on the new process for making the known steroid.

    • October 13, 1959: Ringold and Rosenkranz receive a patent on the process.

    • January 1960: Manson files a patent application for the same process

  • Held: Not patentable

    • P did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor-inhibiting characteristics

    • Patentee didn’t find the use of the steroid if later someone else find a use of the steroid (but nth to do with inhibiting a tumor) patentee would get a windfall

    • If patent claim is not relevant to its use it would cover all its uses

      • “Until the process claim has been reduced to production of a product shown to be useful the metes and bounds of that monopoly are not capable of precise delineation" If you don’t have a use, no clear boundary of the claim

      • Prof: but utility doesn’t determine the boundary of a claim, court is worried patentee would get a windfall/bonus from what they did not do

    • Patent is not a hunting license: only patent license when you successfully complete the hunt - it is not a reward for the research, but compensation for its successful conclusion

      • Could file a patent application, but if you are not there yet, keep working

      • Not that it cannot get a patent, but it is not ready yet but waiting is worrying for them as others would get there before them/ steal their idea

      • Duplicate research without disclosure

    • Research tools are likely to have utility concerns, as they are used to generate other things would prohibit downstream research

      • Counter: need to encourage others to invent such research tools

  • Brenner applied for patent then Manson later applied. Two competing claims on the same process, PTO decide whether it is patentable and who should get the patent

    • Manson tries to freeride the previous

    • Narrow definition of useful: frivolous and in-significant

    • Broad definition of useful: not positively harmful to society rejected

    • A process patent in the chemical field, which 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 the statute

  • Dissent:

    • Reject the narrow definition of ‘useful’

    • To encourage one chemist/ 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 the discovery permits someone else to take a further but perhaps less difficult step leading to a commercially useful item

  • Cases following Brenner state that a claimed invention must have a specific and substantial utility that is credible Substantial utility standard requires proof that an invention:

    • serves some practical purpose

    • not generally promising/ promising enough to pursue further

    • presently available benefit to the public

• What counts as useful?

  • [No] Project initiation: pure concept stage

  • [No] Promising experimental results: Brenner v Manson

    • [despite decent chance if it proceeds to clinical result]

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• [Yes] Promising Clinical Results, e.g. in virtro – in re Brana

  • In virtro = (of a process) performed or taking place in a test tube, culture dish, or elsewhere outside a living organism.

• [Yes] Working model or prototype; in vivo effectiveness

  • In vivo = (of a process) performed or taking place in a living organism.

• Different treatment between experimental results and clinical result

  • Certain things are so important that we cannot over protect them worry that it would affect downstream research

  • Following innovation of an invention may goes into different fields

• In re Fisher (US Court of Appeals Federal Circuit) (2005)

  • Facts: P applied patent for an EST (Expressed sequence tag) relating to 5 purified nucleic acid sequences that encode proteins and protein fragments in maize plants. P did not know the precise structure or function of the gene and protein encoded for, P argue there are 7 uses.

    • Cannot predict what protein this EST would make, cannot use it to treat disease, don’t know enough about what this sequence does but there are other uses: e.g. molecular marker Whether enough for utility?

  • Held: Not patentable, utility must be specific and substantial

    • Specific utility

      • P’s alleged uses are so general as to be meaningless -...