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Utility – Section 101. 101. Whoever invents and new AND USEFUL machine, manufacture, . . . . 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)

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Utility – Section 101

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utility section 101

Utility – Section 101

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

main trouble areas
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
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.).
brenner v manson p 229
Brenner v Manson, p 229
  • 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
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. * * *"

R1-R4: Markush groups

N: Markush group

brana cont d p 245
Brana cont’d: p. 245
  • FDA approval, however, is not a prerequisite for finding a compound useful within the meaning of the patent laws. Usefulness in patent law, and in particular in the context of pharmaceutical inventions, necessarily includes the expectation of further research and development.. Were we to require Phase II testing in order to prove utility, the associated costs would prevent many companies from obtaining patent protection on promising new inventions, thereby eliminating an incentive to pursue, through research and development, potential cures in many crucial areas such as the treatment of cancer.

-- 34 U.S.P.Q.2d 1436, 1443


Working Model or Prototype; in vivo effectiveness

Promising Experimental Results: Brenner v. Manson

Promising Clinical Results, e.g., in vitro – In re Brana

Project Initiation: Pure Concept Stage


Mining Claim Systems:

Require-ments and Timing Issues

some quick economics
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

ex parte fischer
Ex Parte 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




“A chemical entity selected from the group consisting of




Markush Group
expressed sequence tags
Expressed Sequence Tags

Most DNA: Unknown Function

EST: Short “Tag”

The good stuff: DNA that codes for a protein

multiple biotechnology patents snp est example
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

  • 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 . . .”
fischer holding
Fischer - holding
  • P 22
    • Immediate utility is to conduct further experiments
    • Too attenuated under Brenner and Brana
expressed sequence tag patents
“Expressed Sequence Tag” Patents
  • 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
transaction costs
Transaction Costs




Firm E

End Product

transaction costs ii
Transaction Costs II




End Product

End Product

End Product