1. Utility and Enablement Intro to IP – Prof Merges Jan. 20, 2009

2. Jan. 20, 2009: End of the Torture

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

4. 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?

5. Traditional Chemical/Pharmaceutical Research Development of Organic Molecules In vitro Testing In vivo Testing animals In vivo Testing humans Number of compounds assessed

6. Development of Organic Molecules In vitro Testing In vivo Testing animals In vivo Testing humans Number of compounds assessed Cost of Research New compound High biological activity Structural similarity to useful products Reasonable correlation between results and utility Results in animals Results in humans Traditional Chemical/Pharmaceutical Research Satisfies Utility Requirement

7. 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.

8. 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.”

9. Biotechnology Utility Examination Guidelines 66 Fed Reg. 1092 (2001) Problem: Express Sequence Tags (ESTs) typically used as molecular probes to search for genes physiological function usually not known “Specific” more than a random fragment of nucleic acid 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 “Substantial” real world use – e.g., link to a disease “Credible” whether a person of ordinary skill in the art would accept that the invention is currently available for its purported use excludes gene probes, chromosome markers, or other basic research tools unless inventor identifies particular gene or chromosome targets Unresolved Issues: How closely an EST must correlate with a particular physiological condition – speculation standard diagnostic tools not “specific” unless inventor specifies the condition that it diagnoses a gene (or tool to identify the gene) is not patentable until its physiological use is known

10. 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.

11. 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. * * *"

12. Project Initiation: Pure Concept Stage Promising Experimental Results: Brenner v. Manson Promising Clinical Results, e.g., in vitro Working Model or Prototype; in vivo effectiveness

13. The Oklahoma Land Rush – A Good Use of Resources?

16. Mining Claim Systems: Require- ments and Timing Issues

17. 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)

18. Terry L. Anderson – Montana State; Hoover Institution David Haddock, Northwestern Law School

20. In re Fischer Claim 1 – “Substantially purified” – echoes of Parke- Davis – “Selected from the group consisting of...” What is this claim form?

21. 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)”

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

23. Multiple Biotechnology Patents: SNP/EST Example C Owns SNP_3/EST_3 A Owns SNP_1 (Or EST_1) B Owns SNP_2/EST_ 2

24. 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...”

25. Fisher - holding – Immediate utility is to conduct further experiments – Too attenuated under Brenner and Brana

26. “Expressed Sequence Tag” Patents: policy issues 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

27. 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"

28. 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.).3 Wheat. 13, 24Lowell v. Lewis, 15 Fed. Cas. 1018 (No. 8568)Bedford v. Hunt, 3 Fed Cas. 37 (No. 1217)

29. “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.” Cubic zirconium Gold Leaf Juicy Whip, Inc. v. Orange Bang, Inc., U.S.P.Q.2d 1700 (Fed.Cir. 1999) Beneficial (Moral) Utility

30. 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.

32. Base, with passageway U-shaped bar Cutting element attached to bar Rotating handle at end of bar CLAIM 1: ELEMENTS

33. 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.” Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Claim Elements Rotating handle at end of bar

34. The Incandescent Lamp Patent Incandescing conductor Bamboo discovered as an incandescing conductor.

35. 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.

36. 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.

37. Narrow “picture” claim – p. 263 3. The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described.

38. Sawyer and Man Commercial product Is this relevant to question of infringement in this case?

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

40. Overlapping and Blocking Patents Quite possible for defendant to have patents that plaintiff infringes Irrelevant to plaintiff’s cause of action

41. What is defendant’s defense? “Is the complainant entitled to a monopoly of all fibrous and textile materials for incandescent conductors?”

42. 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.

43. 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

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

45. Edison’s experiments – relevance? How does this evidence bear on the question of the proper scope of Sawyer and Man’s patent?

46. Page 268 [H]ow 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?

47. 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.

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