B.Chemical Compound

Brenner,Commissioner of Patents v.Manson

United States Supreme Court,1966

383 U.S.519

[Manson successfully made a chemical process for making certain steroid compounds which Manson argues that,because of the effect of a very similar steroid in an adjacent homologue in inhibiting tumor in mice,has satisfied the utility requirement.The Examiner finally rejected Manson’s application,and the Board of Appeals affirmed.The CCPA reversed.]

JUSTICE FORTAS delivered the opinion.

…

Our starting point is the proposition,neither disputed nor disputable,that one may patent only that which is“useful.”Suffice it to say that the concept of utility has maintained a central place in all of our patent legislation,beginning with the first patent law in 1790 and culminating the present law’s provision….

As is often the case,however,a simple,everyday word can be pregnant with ambiguity when applied to the facts of life.That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility – other than as a possible object of scientific inquiry – has not yet been evidenced.It was not long ago that agency and court seemed of one mind on the question.In In re Bremner,the court affirmed rejection by the Patent Office of both process and product claims.It noted that“no use for the products claimed to be developed by the processes had been shown in the specification.”It held that“It was never intended that a patent be granted upon a product,or a process producing a product,unless such product be useful.”Nor was this new doctrine in the court.

The Patent Office has remained stead-fast in this view.The CCPA,however,has moved sharply away from Bremner.The trend began in In re Nelson.There,the court reversed the Patent Office’s rejection of a claim on a process yielding chemical intermediates“useful to chemists doing research on steroids,”despite the absence of evidence that any of the steroids thus ultimately produced were themselves“useful.”The trend has accelerated,culminating in the present case where the court held it sufficient that a process produces the result intended and is not“detrimental to the public interest.”

It is not remarkable that differences arise as to how the test of usefulness is to be applied to chemical processes.Even if we knew precisely what Congress meant in 1790 when it devised the“new and useful”phraseology and in subsequent re-enactments of the test,we should have difficulty in applying it in the context of contemporary chemistry where research is as comprehensive as man’s grasp and where little or nothing is wholly beyond the pale of“utility”– if that word is given its broadest reach.

Respondent does not – at least in the first instance – rest upon the extreme proposition advanced by the court below,that a novel chemical process is patentable so long as it yields the intended product and so long as the product is not itself“detrimental.”Nor does he commit the outcome of his claim to the slightly more conventional proposition that any process is“useful”within the meaning of§ 102 if it produces a compound whose potential usefulness is under investigation by serious scientific researchers,although he urges this position,too,as an alternative basis for affirming the decision of the CCPA.Rather,he begins with the much more orthodox argument that his process has a specific utility which would entitle him to a declaration of interference even under the Patent Office’s reading of § 101.The claim is that the supporting affidavits filed pursuant to Rule 204(b),by reference to Ringold’s 1956 article,reveal that an adjacent homologue of the steroid yielded by his process has been demonstrated to have tumor-inhibiting effects in mice,and that this discloses the requisite utility.We do not accept any of these theories as an adequate basis for overriding the determination of the Patent Office that the“utility”requirement has bot been met.

Even on the assumption that the process would be patentable were respondent to show that the steroid produced had a tumor-inhibiting effect in mice,we would not overrule the Patent Office finding that respondent has not made such a showing.The Patent Office held that,despite the reference to the adjacent homologue,respondent’s papers did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor-inhibiting characteristics.Indeed,respondent himself recognized that the presumption that adjacent homologues have the same utility has been challenged in the steroid field because of“a greater known unpredictability of compounds in that field.”In these circumstances and in this technical area,we would not overturn the finding of the Primary Examiner,affirmed by the Board of Appeals and not challenged by the CCPA.

The second and third points of respondent’s argument present issues of much importance.Is a chemical process“useful”within the meaning of § 101 either (1)because it works – i.e.,produces the intended product? or (2) because the compound yielded belongs to a class of compounds now the subject of serious scientific investigation? These contentions present the basic problem for our adjudication.Since we find no specific assistance in the legislative materials underlying §101,we are remitted to an analysis of the problem in light of the general intent of Congress,the purpose of the patent system,and the implication of a decision one way or the other.

In support of his plea that we attenuate the requirement of“utility,”respondent relies upon Justice Story’s well-known statement that“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”– and upon the assertion that to do so would encourage inventors of new process to publicize the event for the benefit of the entire scientific community,thus widening the search for uses and increasing the fund of scientific knowledge.Justice Story’s language sheds little light on our subject.Narrowly read,it does not more than compel us to decide whether the invention in question is“frivolous and insignificant”– a query no easier of application than the one built into the statute.Read more broadly,so as to allow the patenting of any invention not positively harmful to society,it places such a special meaning on the word“useful”that we cannot accept it in the absence of evidence that Congress so intended.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.

It is true,of course,that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions.And it may be that inability to patent a process to some extent discourages disclosure and leads to greater secrecy than would otherwise be the case.The inventor of the process,or the corporate organization by which he is employed,has some incentive to keep the invention secret while uses for the product are searched out.However,in light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible – while broadening the scope of the claim as widely as possible – the argument based upon the virtue of disclosure must be warily evaluated.Moreover,the pressure for secrecy is easily exaggerated,for if the inventor of a process cannot himself ascertain a“use”for that which his process yields,he has every incentive to make his invention known to those able to do so.Finally,how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent,there is little incentive for others to undertake a search for uses.

Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy,we believe a more compelling consideration is 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.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.

These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process.Respondent appears to concede that with respect to a product,as opposed to a process,Congress has struck the balance on the side of nonpatentability unless“utility”is shown.Indeed,the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case.We find absolutely no warrant for the proposition that although Congress intended that no patent be granted on a chemical compound whose sole“utility”consists of its potential role as an object of usetesting,a different set of rules was meant to apply to the process which yielded the unpatentable product.That proposition seems to us little more than an attempt to evade the impact of the rules which concededly govern patentability of the product itself.

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.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.”

Mr.Justice Harlan,concurring in part and dissenting in part.

I cannot agree with [the Court’s] resolution of the important question of patentability.

Respondent has contended that a workable chemical process,which is both new and sufficiently nonobvious to satisfy the patent statute,is by its existence alone a contribution to chemistry and“useful”as the statute employs that term.Certainly this reading of“useful”in the statute is within the scope of the constitutional grant,which states only that“[t]o promote the Progress of Science and useful Arts,”the exclusive right to“Writings and Discoveries”may be secured for limited time to those who produce them.Yet the patent statute is somewhat differently worded and is on its face open both to respondent’s construction and to the contrary reading given it by the Court.In the absence of legislative history on this issue,we are thrown back on policy and practice.Because I believe that the Court’s policy arguments are not convincing and that past practice favors the respondent,I would reject the narrow definition of“useful”and uphold the judgment of the Court of Customs and Patent Appeals (hereafter CCPA).

The Court’s opinion sets out about half a dozen reasons in support of its interpretation.Several of these arguments seem to me to have almost no force.For instance,it is suggested that“[u]ntil 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”and“[i]t may engross a vast,unknown,and perhaps unknowable area.”I fail to see the relevance of these assertions; process claims are not disallowed because the products they produce may be of“vast”importance nor,in any event,does advance knowledge of a specific product use provide much safeguard on this score or fix“metes and bounds”precisely since a hundred more uses may be found after a patent is granted and greatly enhance its value.

The further argument that an established product use is part of“[t]he basic quid pro quo”for the patent or is the requisite“successful conclusion”of the inventor’s research appears to beg the very question whether the process is“useful”simply because it facilitates further research into possible product uses.The same infirmity seems to inhere in the Court’s argument that chemical products lacking immediate utility cannot be distinguished for present purposes from the processes which create them,that respondent appears to concede and the CCPA holds that the products are nonpatentable,and that therefore the processes are nonpatentable.Assuming that the two classes cannot be distinguished,a point not adequately considered in the briefs,and assuming further that the CCPA has firmly held such products nonpatentable,this permits us to conclude only that the CCPA is wrong either as to the products or as to the processes and affords no basis for deciding whether both or neither should be patentable absent a specific product use.

More to the point,I think,are the Court’s remaining,prudential arguments against patentability: namely,that disclosure induced by allowing a patent is partly undercut by patent-application drafting techniques,that disclosure may occur without granting a patent,and that a patent will discourage others from inventing uses for the product.How far opaque drafting may lessen the public benefits resulting from the issuance of a patent is not shown by any evidence in this case but,more important,the argument operates against all patents and gives no reason for singling out the class involved here.The thought that these inventions may be more likely than most to be disclosed even if patents are not allowed may have more force; but while empirical study of the industry might reveal that chemical researchers would behave in this fashion,the abstractly logical choice for them seems to me to maintain secrecy until a product use can be discovered.As to discouraging the search by others for product uses,there is no doubt this risk exists but the price paid for any patent is that research on other uses or improvements may be hampered because the original patentee will reap much of the reward.From the standpoint of the public interest the Constitution seems to have resolved that choice in favor of patentability.

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.

This position is strengthened,I think,by what appears to have been the practice of the Patent Office during most of this century.While available proof is not conclusive,the commentators seem to be in agreement that until Bremner in 1950,chemical patent applications were commonly granted although no resulting end use was stated or the statement was in extremely broad terms.Taking this to be true,Bremner represented a deviation from established practice which the CCPA has now sought to remedy in part only to find that the Patent Office does not want to return to the beaten track.If usefulness was typically regarded as inherent during a long and prolific period of chemical research and development in this country,surely this is added reason why the Court’s result should not be adopted until Congress expressly mandates it,presumably on the basis of empirical data which this Court does not possess.

Fully recognizing that there is ample room for disagreement on this problem when,as here,it is reviewed in the abstract,I believe the decision below should be affirmed.

Notes and Comments

1.The usefulness of chemical processes is usually hard to define,and for the most part,ought to be determined by expert witness’ testimony to be conducted at trial level.It should not be very recommendable for a reviewing court to take highly sophisticated technical issues of facts in its own hand.If in doubt,as in Manson,the court ought to remand the case to lower courts to make further findings of facts,rather than making determination based on personal knowledge.Some judges may be highly knowledgeable about scientific issues,but that’s particularly dangerous.Why is this so?

2.Each individual scientist (or person having special knowledge about a particular art) tends to be strongly opinionated with a particular technical problem,and each,of course,is entitled to his own“better”solutions.That’s called improvement,and that’s precisely what is meant by“Progress of … useful Arts”as each scientist comes up with his own improvement over the prior art.Sometime,the invention may not seem to be precisely“better”in one aspect or another than the previous art.For example,a new product or method may work less quickly than the prior art,but it may be cheaper,which is by all means not a significant improvement (maybe to some,not improvement at all).But who are we to judge its value in term of usefulness,particularly the market value,which even an economist may not be able to fully predict,let alone at the point of the early stage of patentability examination?

3.Brenner v.Manson is seen by some commentators as the“high watermark”for the Court’s utility inquiry.Since then the judicial activism receded.