Patents - Utility

Brenner v. Manson

Manson sought patent for chemical process but could not show any practical utility beyond possible use in research.

Rule of Law: Under §101, a patent requires specific and substantial utility—a patent is not a “hunting license” for research, and inventions useful only as objects of investigation are not patentable.

What are the three requirments for Utility?

specific (not vague),

substantial (a real-world, presently available benefit), and

credible (believable to a PHOSITA)

In chemical and biotech cases, what predictive evidence is valid?

animal or in vitro testing (petri dish) can suffice

What does utility help prevent?

“Gun jumping”, prevents wasteful races to claim broad scientific territory before meaningful development occurs

Once patent shows any utility…

patent confers rights over all uses, even undiscovered ones

What can discoverers of new uses have to do?

can obtain use (process) patents, but must still license the underlying product

How often are utility rejections give out?

Rare in practice

Federal Circuit in regards to morality…

removed questions of morality from patent validity analysis