Brenner v. Manson

Brief Fact Summary.

Manson (Plaintiff) sought to patent a chemical process whose only demonstrable utility was to aid in research.

Synopsis of Rule of Law.

A process whose only demonstrable utility is to aid in research is not patentable.

Facts.

Manson (Plaintiff) sought to patent a chemical process for synthesizing certain steroidal compounds.  Although these compounds were not in themselves beneficial, they were useful in cancer research.  The Patent Office (Defendant) denied the application on the basis that the process was not useful.  The Court of Customs and Patent Appeals reversed, and the United States Supreme Court granted review.

Issue.

Is a process whose only demonstrable utility is to aid in research patentable?

Held.

(Fortas, J.)  No.  A process whose only demonstrable utility is to aid in research is not patentable.  It has been the rule since the inception of patent law that, for an invention to be patentable, it must be useful.  An invention must not only be harmless, it must also not be frivolous or insignificant.  The question therefore presents itself as to whether a product or process is useful if, rather than being useful in itself, it is the subject of serious scientific inquiry.  While the Patent Act is silent on this issue, an examination of the purposes of the patent law reveals that the answer must be no.  The basis quid pro quo of patent law is that a monopoly is granted in exchange for a finished thing with substantial utility.  A product or process that is useful as the subject of research does not fit this requirement.  Further, to allow a monopoly on the research stage of innovation might well inhibit such innovation, in direct contravention to the purposes of patent law.  In this case, the process in question is capable only of synthesizing products suitable for research, not useful in themselves.  The process is therefore not patentable.  Reversed.

Dissent.

(Harlan, J.)  The Court’s policy arguments against the patentability of processes that are useful in generating objects of study are not convincing.  Further, decisional history tends to support such patentability.

Concurrence.

(Harlan, J.)  The Court’s policy arguments against the patentability of processes that are useful in generating objects of study are not convincing.  Further, decisional history tends to support such patentability.

Discussion.

Utility is one of the basic requirements of patent law.  Indeed, it is one of the characteristics relating to patents described in Art. I, § 8 of the Constitution.  Congress, in its first Patent Act (enacted in 1790), mandated this requirement.  It is now codified at 35 U.S.C. § 101.