Brenner v. Manson

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Brenner v. Manson
Seal of the United States Supreme Court.svg
Supreme Court of the United States
Argued November 17, 1965
Decided March 21, 1966
Full case nameBrenner, Commissioner of Patents v. Manson
Citations383 U.S. 519 ( more )
86 S. Ct. 1033; 16 L. Ed. 2d 69; 1966 U.S. LEXIS 2907; 148 U.S.P.Q. (BNA) 689
Case history
PriorIn re Manson, 333 F.2d 234 (C.C.P.A. 1964); cert. granted, 380 U.S. 971(1965).
Court membership
Chief Justice
Earl Warren
Associate Justices
Hugo Black  · William O. Douglas
Tom C. Clark  · John M. Harlan II
William J. Brennan Jr.  · Potter Stewart
Byron White  · Abe Fortas
Case opinions
MajorityFortas, joined by Warren, Black, Clark, Brennan, Stewart, White
DissentHarlan, joined by Douglas
Laws applied
35 U.S.C.   § 101

Brenner v. Manson, 383 U.S. 519 (1966), was a decision of the United States Supreme Court in which the Court held that a novel process for making a known steroid did not satisfy the utility requirement, because the patent applicants did not show that the steroid served any practical function. [1] The Court ruled that "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." [2] Practical or specific utility, so that a "specific benefit exists in currently available form" is thus the requirement for a claimed invention to qualify for a patent. [3]

Contents

The case is known for the statement "a patent is not a hunting license." [4]

Appellate jurisdiction issue

The Manson case is the first in which the Court granted a writ of certiorari in an appeal of a patent office rejection of a patent application. For many years there had been uncertainty whether the United States Court of Customs and Patent Appeals (CCPA) was an Article III court, and thus one as to which the Supreme Court had certiorari jurisdiction. [5]

For many years, almost until the eve of the Manson case, the Solicitor General had opposed petitions for certiorari by disappointed patent applicants on the basis that the CCPA was an Article I court to which the Supreme Court's certiorari jurisdiction did not extend. In Lurk v. United States, [6] however, the Court held that judges of the CCPA (as well as those of the Court of Claims) were Article III judges. [7] In the Manson case the Court expressly held, unanimously, that certiorari was available to review CCPA decisions. [8]

This paved the way for the US Government to seek review in the Supreme Court of judgments of the CCPA (and its successor the Federal Circuit) reversing denials of patent applications, which it did beginning with Manson.

Substantive patent law issue

Justice Abe Fortas SCOTUS Justice Abe Fortas.jpeg
Justice Abe Fortas

Justice Abe Fortas delivered the unanimous opinion of the Court on the jurisdictional issue in this case and the 7-2 opinion of the Court on the issue of utility. Justice John Marshall Harlan II, joined by Justice William O. Douglas, dissented on the utility issue.

Majority opinion

The substantive patent law issue in the case was the degree of specific utility a claimed invention must have in order to qualify for patenting. Andrew Manson applied for a patent on a novel process for making a form of dihydrotestosterone, a known steroid chemical. A specific use for the product was not known or disclosed by Manson, although it was hypothesized that it could be screened for possible anti-cancer utility. Other steroids of similar chemical structure were known to inhibit tumors in mice. [9] The Patent Office took the position that a process for making a known product could be patented only if the product had a known utility, [10] while Manson argued, and the Court of Customs and Patent Appeals subsequently agreed, that it was sufficient for the process to be useful in making the product regardless of whether the product itself had any particular utility. The Patent Office refused to allow Manson to proceed. He appealed, and the Court of Customs and Patent Appeals reversed the Patent Office, [11] saying that "where a claimed process produces a known product, it is not necessary to show utility for the product" so long as the product "is not alleged to be detrimental to the public interest." [12] The Office then sought review in the Supreme Court.

The Supreme Court began by considering whether the fact that a closely related chemical had displayed anti-tumor activity in mice sufficed to satisfy the requirement in 35 U.S.C. § 101 that the subject matter of a patent must be "useful." [13] The Court said it would not overturn the Office's finding that it did not follow from the mice data that the claimed process was useful, because whether the steroid product yielded by Manson's process would have similar tumor-inhibiting characteristics could not be assumed without proof, given the unpredictability of compounds in the steroid field. [14] Nor was the fact that the invention was not "harmful to society" sufficient. "There are, after all, many things in this world which may not be considered "useful" but which, nevertheless are totally without a capacity for harm." [15]

Manson argued that allowing such claims as his would encourage disclosure, discourage secrecy, and promote efforts to make technological advances. The Court replied that a ’more compelling consideration" was that the monopoly so granted would discourage inventive activity by others:

[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. 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. It may engross a vast, unknown, and perhaps unknowable area. Such a patent may confer power to block off whole areas of scientific development, without compensating benefit to the public. 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 with 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 engross what may prove to be a broad field. [3]

Dissent

In dissent, Justice Harlan argued that the result of the ruling might be to retard chemical progress:

What I find most troubling about the result reached by the Court is the impact it may have on chemical research. Chemistry is a highly interrelated field, and a tangible benefit for society may be the outcome of a number of different discoveries, one discovery building upon the next. 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. In my view, our awareness in this age of the importance of achieving and publicizing basic research should lead this Court to resolve uncertainties in its favor, and uphold the respondent's position in this case. [16]

Follow-up

Two relevant cases (In re Kirk [17] and In re Joly) [18] were decided by the court on the same day. and applied the Brenner standard.

Related Research Articles

As with all utility patents in the United States, a biological patent provides the patent holder with the right to exclude others from making, using, selling, or importing the claimed invention or discovery in biology for a limited period of time - for patents filed after 1998, 20 years from the filing date.

In United States patent law utility is a patentability requirement. As provided by 35 U.S.C. § 101, an invention is "useful" if it provides some identifiable benefit and is capable of use and "useless" otherwise. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.

Neither software nor computer programs are explicitly mentioned in statutory United States patent law. Patent law has changed to address new technologies, and decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit (CAFC) beginning in the latter part of the 20th century have sought to clarify the boundary between patent-eligible and patent-ineligible subject matter for a number of new technologies including computers and software. The first computer software case in the Supreme Court was Gottschalk v. Benson in 1972. Since then, the Supreme Court has decided about a half dozen cases touching on the patent eligibility of software-related inventions.

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

Diamond v. Diehr, 450 U.S. 175 (1981), was a United States Supreme Court decision which held that controlling the execution of a physical process, by running a computer program did not preclude patentability of the invention as a whole. The high court reiterated its earlier holdings that mathematical formulas in the abstract could not be patented, but it held that the mere presence of a software element did not make an otherwise patent-eligible machine or process patent ineligible. Diehr was the third member of a trilogy of Supreme Court decisions on the patent-eligibility of computer software related inventions.

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

Parker v. Flook, 437 U.S. 584 (1978), was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent eligible only if there is some other "inventive concept in its application." The algorithm itself must be considered as if it were part of the prior art, and the claim must be considered as a whole. The exact quotation from the majority opinion is: "Respondent’s process is unpatentable under §101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention." "The fact that the algorithm may not have actually been known previously and that, when taken in combination with other claim elements, it might produce an invention that is novel and nonobvious, plays no part in the analysis."

The United States Court of Customs and Patent Appeals (CCPA) was a United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes.

Graham v. John Deere Co., 383 U.S. 1 (1966), was a case in which the United States Supreme Court clarified the nonobviousness requirement in United States patent law, set forth 14 years earlier in Patent Act of 1952 and codified as 35 U.S.C. § 103.

Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection ... have confused the issue further and should not be permitted." The case was argued on October 16, 1972, and was decided November 20, 1972.

The history of United States patent law started even before the U.S. Constitution was adopted, with some state-specific patent laws. The history spans over more than three centuries.

<i>In re Bilski</i>

In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385, was an en banc decision of the United States Court of Appeals for the Federal Circuit (CAFC) on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of hedging risks in commodities trading. The court also reiterated the machine-or-transformation test as the applicable test for patent-eligible subject matter, and stated that the test in State Street Bank v. Signature Financial Group should no longer be relied upon.

Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969), is a 1969 decision of the United States Supreme Court on the legal standard governing the obviousness of claimed inventions. It stands for the proposition that, when old elements are combined in a way such that they do not interact in a novel, unobvious way, then the resulting combination is obvious and therefore unpatentable.

Dann v. Johnston, 425 U.S. 219 (1976), is a decision of the United States Supreme Court on the patentability of a claim for a business method patent.

In United States patent law, a composition of matter is one of the four principal categories of things that may be patented. The other three are a process, a machine, and an article of manufacture. In United States patent law, that same terminology has been in use since the first patent act in 1790.

<i>National Research Development Corporation v Commissioner of Patents</i> Australian patent law case

National Research Development Corporation v Commissioner of Patents, also known as the NRDC case, was a significant Australian patent law case, decided in the High Court of Australia on 6 December 1959. The case was important in clarifying what is meant by "manner of manufacture" in respects of patent applications in accordance with the Patents Act 1952 (Cth).

Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), was a Supreme Court case, which decided, that "a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated.” However, as a "bizzare conciliatory prize" the Court allowed patenting of complementary DNA, which contains exactly the same protein-coding base pair sequence as the natural DNA, albeit with introns removed.

In US patent law, non-obviousness is one of the requirements that an invention must meet to qualify for patentability, codified in 35 U.S.C. §103. An invention is not obvious if a "person having ordinary skill in the art" (PHOSITA) would not know how to solve the problem at which the invention is directed by using exactly the same mechanism. Since the PHOSITA standard turned to be too ambiguous in practice, the U.S. Supreme Court provided later two more useful approaches which currently control the practical analysis of non-obviousness by patent examiners and courts: Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) gives guidelines of what is "non-obvious", and KSR v. Teleflex (2006) gives guidelines of what is "obvious".

References

The citations in this article are written in Bluebook style. Please see the talk page for more information.

  1. ↑ Brenner v. Manson, 383 U.S. 519 (1966).
  2. ↑ 383 U.S. at 534.
  3. 1 2 383 U.S. at 534-35.
  4. ↑ 383 U.S. at 536. What Justice Fortas meant by this quip was that patents should not be granted so that the patentee could look for (hunt) a utility after gaining possession of a patent monopoly.
  5. ↑ In Ex parte Bakelite Corp., 279 U.S. 438 (1929), and Williams v. United States, 289 U.S. 553 (1933), the Court had held that the CCPA and Court of Claims were Article I courts. See alsoPostum Cereal Co. v. California Fig Nut Co., 272 U.S. 693 (1927). However, subsequent legislation made the matter unclear.
  6. ↑ Lurk v. United States , 370 U.S. 530 (1962).
  7. ↑ However, the Lurk decision expressly left open the question whether 28 U.S.C.   § 1256 conferred certiorari jurisdiction over patent and trademark cases decided in the C.C.P.A., 370 U.S. at 578 n. 49. It suggested, however, that the prior law to the contrary was a museum piece.
  8. ↑ 383 U.S. at 528 ("We therefore conclude that § 1256 authorizes the grant of certiorari in the present case."
  9. ↑ 383 U.S. at 521-22.
  10. ↑ The agency said: "It is our view that the statutory requirement of usefulness of a product cannot be presumed merely because it happens to be closely related to another compound which is known to be useful." See 383 U.S. at 522.
  11. ↑ In re Manson, 333F.2d234 ( C.C.P.A. 1964).
  12. ↑ 383 U.S. at 522.
  13. ↑ 35 U.S.C.   § 101.
  14. ↑ 383 U.S. at 532.
  15. ↑ 383 U.S. at 533.
  16. ↑ 383 U.S. at 540 (Harlan, J., dissenting).
  17. ↑ Kirk, 376 F.2d at 936- 46.
  18. ↑ In re Joly, 376 F.2d 906 (C.C.P.A. 1967)
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