Brenner v. Manson
16 L. Ed. 2d 69, 86 S. Ct. 1033 (1966)
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Rule of Law:
To satisfy the utility requirement of 35 U.S.C. § 101, a chemical process must produce a product with a demonstrated specific and substantial utility. A process is not considered "useful" if its only utility is to produce a product for scientific research or if its utility is merely speculative.
Facts:
- Manson, a chemist, developed a novel process for making a specific steroid compound.
- The steroid compound produced by Manson's process had no proven utility of its own.
- A published scientific article revealed that a chemically similar compound, an adjacent homologue, had demonstrated tumor-inhibiting effects in mice.
- Manson's patent application did not assert a specific utility for his compound but relied on its potential for scientific research and its similarity to the useful homologue.
- Separately, inventors Howard Ringold and George Rosenkranz had already been issued a U.S. patent for the exact same process.
- Manson sought to challenge the patent of Ringold and Rosenkranz by claiming he had invented the process at an earlier date.
Procedural Posture:
- Manson filed a patent application in the U.S. Patent Office for a chemical process.
- Manson requested an 'interference' proceeding to establish his priority of invention over a patent already issued to Ringold and Rosenkranz.
- The Patent Office examiner denied Manson's application for failure to disclose any utility for the compound produced by the process.
- Manson appealed the examiner's denial to the Board of Appeals within the Patent Office, which affirmed the rejection.
- Manson appealed the Board's decision to the Court of Customs and Patent Appeals (CCPA).
- The CCPA (an intermediate appellate court) reversed the decision of the Patent Office Board of Appeals.
- The Commissioner of Patents, Brenner, petitioned the U.S. Supreme Court for a writ of certiorari to review the CCPA's decision.
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Issue:
Does a chemical process that produces a product with no known utility, other than its potential as an object for scientific research, satisfy the statutory requirement of "utility" under 35 U.S.C. § 101?
Opinions:
Majority - Mr. Justice Fortas
No. A chemical process is not patentable under the utility requirement of § 101 if it produces a compound whose only demonstrated use is as a subject of scientific investigation. The statutory requirement of utility necessitates a showing of a specific and substantial benefit in a currently available form. Granting a patent for a process that creates a product of unknown utility would confer a monopoly over a broad and undefined area of scientific research without the corresponding public benefit, which is the essential quid pro quo of the patent system. The Court found no reason to apply a different utility standard to a process than to the product it creates, as doing so would allow inventors to evade the rules governing product patentability. A patent is not a 'hunting license' to search for a use, but rather a reward for the successful conclusion of that search.
Concurring-in-part-and-dissenting-in-part - Mr. Justice Harlan
Yes. A new and nonobvious chemical process that reliably produces its intended product is inherently 'useful' under the patent statute because it is a tangible contribution to chemical science that facilitates further research. The majority's narrow interpretation of 'useful' may stifle basic research by discouraging inventors from disclosing new processes until a commercial use is found. The quid pro quo for the patent is the disclosure of the new process itself, which allows other scientists to build upon that knowledge. Historically, the Patent Office granted patents for chemical processes without requiring a specific end-use for the product, and the Court should not depart from this practice without a clear mandate from Congress, as it risks harming scientific progress.
Analysis:
Brenner v. Manson established the modern "specific and substantial utility" requirement for patentability, significantly raising the bar from previous, more lenient standards. This decision clarified that an invention's utility must be concrete and well-defined, not merely speculative or as an object for further research. The ruling has had a profound and lasting impact on the chemical and pharmaceutical industries, requiring inventors to demonstrate a practical, real-world use for a new compound or process before a patent can be granted. This prevents inventors from claiming broad areas of scientific inquiry before a concrete application has been discovered and disclosed.
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