Intellectual Property Law
Patent
Utility

1.	Utility
2.	Statutory Basis
a.	27. (1) The Commissioner shall grant a patent for an invention...
b.	"invention" means any new and useful art . . .
3.	Issues
a.	Operability
i.	Does it do anything?
b.	Practical Utility / Threshold
i.	Does it do something practical / commercially valuable?
c.	Beneficial Utility
i.	Does it do something socially beneficial?
4.	Beneficial Utility
a.	In the leading U.S. case of Lowell v Lewis (1917) Story J. suggested in dicta that an invention which was “injurious to the morals, health, or good order of society, or frivolous and insignificant” would not be patentable.
b.	This dictum has had little practical effect
i.	Though at one time it was used to reject patents for e.g. gambling machines
5.	Operability
6.	Operability
a.	Two contexts
i.	Known inoperability
(1)	Impossible invention
(2)	Mistaken claims
(3)	‘Inadequate’ claims
(4)	Inoperable species
ii.	Uncertain operability
(1)	Possible inoperable species
(2)	May & Baker, Monsanto
7.	Known Inoperability
a.	If the claim, properly construed, encompass inoperable embodiments, the claim is invalid
b.	Various Contexts
i.	Impossible inventions
(1)	E.g. perpetual motion
ii.	Mistaken disclosure
(1)	New Process Screw
iii.	‘Inadequate’ disclosure
(1)	Mettaliflex
iv.	Claims encompass non-operable embodiments, as well as valuable one
(1)	Union Carbide Canada Ltd. v. Trans-Canadian Feeds Ltd., Minerals Separation, Burton Parson
8.	Known Inoperability
a.	Impossible inventions & Mistaken disclosure
i.	No embodiment of the invention as described works
(1)	Treated on the same footing
ii.	Invalid
b.	Is the policy rationale for invalidating claims the same in both cases
i.	Where the invention works, but the invention as claimed does not work
ii.	The invention is wholly inoperative
9.	‘Inadequate’ Disclosure
a.	Specification is said to omit some essential feature
i.	E.g Mettaliflex
(1)	Flexible watch band, method of holding parts together not specified
ii.	Really a question of sufficiency of disclosure
iii.	Claim is valid if omitted means is not essential to the invention
(1)	E.g. there is nothing inventive about the way in which the parts are held together 
(2)	Means of carrying out the omitted elements should be obvious to a person skilled in the art.
10.	Practical Utility
11.	Practical Utility
a.	How useful is “useful”?
i.	Do you have to invent a better mousetrap?
b.	All that is required is that the invention work as promised
i.	It is enough that the mousetrap traps mice
(1)	It need not trap mice better than existing mousetraps
(2)	It need not even trap mice well
(3)	The law...does not look to the degree of utility; it simply requires, that it shall be capable of use...
(a)	Justice Story, Bdeford v Hunt (1817)
c.	Why is the threshhold not higher?
12.	Threshhold
a.	. . . whether [the invention] be more or less useful is a circumstance very material to the interests of the patentee, but of no importance to the public. If it be not extensively useful, it will silently sink into contempt and disregard.
(1)	Justice Story, Lowell v Lewis (1817) 
13.	Threshhold
a.	What about the argument that the patent monopoly must not be given out too easily
i.	An invention must be sufficiently inventive to warrant the lure of a patent
14.	Threshhold
a.	Obviousness is concerned with the cost of inventing
i.	The obviousness threshhold is high to ensure that inventions which did not require the lure of a patent to develop are not monopolized
b.	Utility is concerned with the value of the invention
i.	Utility threshhold is low so that it is the inventor/investors and not the court which decides whether the invention is likely to be worth the cost of development or is commercially practical to implement
15.	Threshold
a.	Given the reliance on the market to distinguish good products from bad and the consequent low threshold for utility, why is there any utility requirement at all?  
i.	If the invention claimed does not work, it will be impossible to infringe those claims.
16.	Threshold in Chemical and Pharmaceutical Patents
17.	Brenner v Manson
a.	The patent was for a process to produce a known steroid
b.	The steroid was the subject of research
i.	. . . steroids of a class which included the compound  in question were undergoing screening for possible tumor- inhibiting effects in mice, and . . .a homologue adjacent to Manson's steroid had proven effective in that role.   
18.	Brenner v Manson
a.	"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."
b.	Summarized as requirement of “specific and substantial utility”
19.	Brenner v Manson
a.	Why is substantial utility required?
i.	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. . . ."
b.	Note that at the time there was an active market for the steroid in question because it was used in research.  If Manson’s process allowed the steriod to be sold at a lower cost, why is this not sufficient practical utility?
20.	Brenner v Manson
a.	If the steroid is not patentable because its only use is in research, what about physical research tools, such as microscopes, whose only use is in research?
21.	Brenner v Manson
a.	Is this holding likely to encourage or discourage early disclosure?
b.	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.
22.	Brenner v Manson
a.	How much specific utility must be proven?
i.	Brenner v Manson says it is not sufficient that the product is the subject of research
ii.	Nor is homology with products known to be useful
iii.	Is it sufficient if it has been shown to have anti-tumor activity in mice?
iv.	Is it sufficient if it is shown to have anti-tumour activity in humans, though safety is not shown?
v.	Is it sufficient if safety is shown, but superior efficacy is not?
b.	Line drawing problem
23.	Brenner v Manson
a.	What is the monopoly effect?
b.	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.
24.	Brenner v Manson
a.	The concern appears to be that an invention may be an insufficient contribution to the ultimate benefit
i.	Analysts have characterized the utility requirement as "a timing device, helping to identify when an invention is ripe for patent protection." Its use relates to concerns that patents on basic research, very far upstream, may impede follow-on innovation by virtue of effects on incentives and on access to upstream technology.
(1)	FTC Report on Competition Policy and Patent Law
25.	Brenner v Manson
a.	Manson reduces the cost of research on this steroid
b.	But other researchers must put a great deal of time and money in order to develop a practical use
c.	Suppose the value of Manson’s contribution is 2% of the value of the final product
i.	Should Manson have a monopoly?
26.	Brenner v Manson
a.	But licence is negotiated before ultimate value is known 
b.	If Manson asks too much, research will proceed on other steriods
c.	Manson will ask a reasonable price
d.	This is what in fact was happening
27.	Policy
a.	Against early patents
i.	Encourage the patent race
ii.	Gives ‘disproportionate’ reward
(1)	Engross whole areas of research
iii.	Provides incentive to develop
b.	For early patents
i.	Discourages the patent race
ii.	Encourages pioneer inventions
iii.	Encourages early disclosure
28.	ESTs
a.	EST are gene fragments which are useful research tools in identifying genes and their functions
b.	Even using an EST a great deal of research is required to e.g. determine the function of a particular gene
c.	Assume ESTs are not obvious
d.	Should someone who discovers an EST be able to patent it?
29.	Uncertain Operability:
Possible Inoperable Species
30.	Possible Inoperative Species
a.	Problem
i.	Core embodiment has known utlity
ii.	It is known that some, but not all, other embodiments will have equal or greater utility
iii.	Narrow claims are useless
iv.	Broad claims are invalid
31.	Re May & Baker
a.	New class of pharmaceuticals: Sulpha drugs
i.	Sulpha drugs were the penicillin of their day
b.	A broad class of drugs
i.	Many members of the class will have therapeutic properties
ii.	Some members of the class will be useless or harmful
iii.	The discovery that drugs of this class are valuable is itself the important discovery
(1)	Subsequent research will focus on this area
32.	Re May & Baker
a.	The patentee’s dilemma
b.	If the patentee claims only those drugs which are known to have therapeutic value, the patent will be too narrow
i.	There are undoubtedly some drugs in the class which are as effective or more effective than those which are presently know
c.	If the patentee claims too broadly, there will be some drugs within the scope of the claims which are not useful.
33.	Re May & Baker
a.	In the result, the claim for one of the most important medical discoveries of the century was held to be invalid
34.	Monsanto
a.	Sound prediction of utility is sufficient to establish utility
b.	Can Monsanto be reconciled with May & Baker
c.	How important is it to have a “theory”?
35.	US Approach
a.	Inoperable combinations do not invalidate claims if a person skilled in the art can determine which combinations are operative without undue experimentation
i.	See e.g. Atlas Powder Co. v. E.I. Dupont de Nemours, 750 F.2d 1569, 1576 (Fed. Cir. 1984)
b.	Is the US approach sound as a matter of policy?
36.	Apotex v Wellcome
a.	Utility can be established at the time of the application by 
i.	Actual utility
ii.	Sound prediction
b.	Can utility be established by actual utility at the time the patent is attacked?
i.	Or must the patent satisfy the “sound prediction” test based on such knowledge as was available at the time the application was filed?
ii.	Should we strike down a patent as lacking utility (no sound prediction) even though we know that in fact it is useful at the time that it is attacked?
37.	Not covered past here Fall 2007
38.	Scope of Claims: 
Known Inoperability
39.	Scope of Claims: Known Inoperability
a.	Claims encompass embodiments with known inoperability, as well as valuable one
(1)	E.g. Union Carbide, Minerals Separations, Burton Parsons
ii.	Problem typically arises in broad claim when inoperability of some embodiments is subsequently discovered
iii.	Question:  Is utility lacking even if it is obvious to a person skilled in the art that the particular embodiment does not work?
40.	Difficult cases
a.	Union Carbide v Trans-Canadian Feeds
b.	Method of making thermoplastic tubing
i.	Nitro-cellulose is a type of thermoplastic
ii.	It is also an explosive and would explode if used in the invention
c.	No one would use nitro-cellulose because it is obvious that it would explode
d.	Claim held invalid
i.	Claim specified any thermoplastic
ii.	Would the claim have been valid had it specified 
(1)	“any non-explosive thermoplastic”?
(2)	“any suitable thermoplastic”?
41.	Difficult Cases
a.	Claims encompass something which lacks utility
i.	Result: The patent is invalid
b.	Problem: What if the lack of utility of some embodiments is obvious with hindsight, though difficult to predict at the time of drafting, so that no one is misled?
42.	Minerals Separation Case
a.	This was an extremely valuable and important invention
b.	“Froth flotation” used to separate minerals from ore.  The ore is finely ground and mixed with water and violently agitated and mixed by blowing air through it.  Frothing agent is added to this mix, which causes froth to form with minerals, but not the undesirable residue, attached.  The minerals are thereby concentrated in the froth on the top of the mixing vat.  The success of the process depends on the frothing agent.  Not just anything will work and some agents work better than others.  
43.	Minerals Separation Case
a.	Claim 9 was for “xanthate” as a frothing agent
b.	The improvement in the concentration of minerals by flotation which comprises subjecting the mineral in the form of a non-acid pulp to a flotation operation in the presence of a xanthate and a frothing agent.
c.	Issue: what is meant by “xanthate”?
44.	Minerals Separation Case
a.	The specification clearly disclosed alkalai xanthates as the preferred embodiment
i.	These worked very well
b.	“Cellulose xanthates” also exist
i.	Cellulose xanthate does not work because the cellulose part impedes the frothing process
ii.	Cellulose xanthate was unstable and difficult to obtain
iii.	It would be clear after minimal experimentation that cellulose xanthate would not work
45.	Textual Issue
a.	Para 4 of disclosure 
i.	“The invention is herein disclosed in some detail as carried out with salt of the sulphur derivative or carbonic acid containing an organic radical such as an alkyl radical and known as xanthate” 
b.	Does this serve as an “internal dictionary” which limits the term in the claim?
c.	Thorson P said yes, SCC/PC said no
i.	Note that it is possible to construct such an internal dictionary, it had just not been done in this case
46.	Policy Issue
a.	If the claim is struck down because of a literal interpretation of the claim, then an inventor who has in fact invented a useful invention will be deprived of their reward
i.	Cf.  Consolboard
b.	If a claim is not struck down even though it is too broad, literally interpreted, then a person relying on the disclosure might be misled: the patent bargain is not upheld
47.	Minerals Separations
a.	On the facts
i.	The best mode was clearly disclosed
ii.	No one was in fact misled
iii.	However, cellulose xanthates were known, and could have been excluded
b.	Should the test be whether a person skilled in the art would in fact be misled by the disclosure?
c.	Or should the court look only at the literal words of the claim?
48.	Minerals Separation
a.	“It is well settled that, where the scope of a claim includes some method which is useless, the claim cannot be saved by showing that no skilled person would ever try to use that method.”
(1)	Per Lord Reid (quoted in Burton Parsons)\
b.	Is this sensible?
49.	Burton Parsons
a.	17. An electrocardiograph cream for use with skin contact electrodes and compatible with normal skin, comprising a stable aqueous emulsion that is anionic, cationic or non-ionic and, containing sufficient highly ionizable salt to provide good electrical conductivity.
50.	Burton Parsons
a.	The claim was valid. 
b.	Was this because
i.	A) the claim specified that the cream was to be compatible with normal human skin, or
ii.	B) because it would be obvious to anyone skilled in the art that it would have to be compatible with normal human skill?
51.	Compare Burton Parsons
a.	It is stressed in many cases that an inventor is free to make his claims as narrow as he sees fit in order to protect himself from the invalidity which will ensue if he makes them too broad. From a practical point of view, this freedom is really quite limited because if, in order to guard against possible invalidity, some area is left open between what is the invention as disclosed and what is covered by the claims, the patent may be just as worthless as if it was invalid. Everybody will be free to use the invention in the unfenced area.
(1)	Burton Parsons
52.	Burton Parsons
a.	It does not seem to me that inventors are to be looked upon as Shylock claiming his pound of flesh. In the present case, there was admittedly a meritorious invention and Hewlett-Packard, after futile attempts to belittle its usefulness, brazenly appropriated it. It was in no way misled as to the true nature of the disclosure nor as to the proper methods of making a competing cream.
i.	Burton Parsons
b.	Can the same be said for Minerals Separation?
53.	Burton Parsons
a.	No unexpected or generally unknown unsuitability was proved or even suggested, which makes this case quite unlike Minerals Separation or Rhône-Poulenc. 
(a)	Burton Parsons
b.	Is this distinction convincing?
i.	Does it imply that if there had been a specific salt identified which e.g. caused severe burns to normal human skin, the patent would be invalid?
ii.	Why should it matter whether xanthates were known if no one was actually misled?
54.	Burton Parsons
a.	To a person skilled in the art] it must be obvious that a cream for use with skin contact electrodes is not to be made up with ingredients that are toxic or irritating. . .The man skilled in the art will just as well appreciate this necessity if the cream to be made is described as "compatible with normal skin" as if it is described as containing only ingredients compatible with normal skin. 
b.	What if the word “compatible” is omitted entirely?  Will a person skilled in the art still understand that toxis substances should not be used?
55.	Burton Parsons
a.	If the answer was (A), that is, the claim was valid because it expressly specified that the cream was to be compatible with normal human skin, then
i.	Is it sound policy to require patentees to specify things which are obvious?
b.	Could Minerals Separation have been saved simply by saying “xanthates which are compatible with the normal frothing process”?  
56.	KMS Fusion
a.	a permeability rate. . . which . . . is low enough to retain hydrogen isotopes within said hollow microsphere at room temperature and an external pressure of one atmosphere
b.	Method for enhancing the dressed carcass weight of meat-producing animals by increasing lean meat deposition and improving the lean meat to fat ration comprising administering to said animals, before slaughter, either orally or parenterally, an effective amount of compound X.
i.	[From Manual of Office Procedure 11.10.02]
57.	Problem
a.	In Minerals Separation cellulose xanthates could in principle have been expressly excluded from the claim, as they were a known xanthate
b.	Problem: What if patentee has a real discovery, but the limits are not clear?