Brenner, Commissioner of Patents v. Manson
383 U.S. 519 (1966)

  • Ringwold and Rosenkrantz invented a process to make a steroid, and got a patent on it.
  • Manson stepped in and claimed that he had invented the process first, so he should get the patent because he was the first to invent. He filed an interference claim (under 35 U.S.C. §102(g)).
  • The USPTO denied Manson’s claim. He appealed.
    • USPTO found that Manson had filed to disclose any utility for his invention.
    • Basically, Manson came up with the process to make the steroid, but didn’t have the foggiest idea what the steroid could possibly be used for. Therefore his invention wasn’t useful.
  • The USPTO Board of Patent Appeals affirmed. Manson appealed.
    • Manson argued three things:
      • That his steroid looked a lot like a different steroid that was found to be a cancer drug. Therefore his steroid could maybe be a cancer drug too.
      • That just having a new compound for scientists to experiment with and study was useful as in general.
      • That it didn’t matter if the steroid had a use, the “process” was useful for making the steroid, and that’s how utility should be defined.
  • The Appellate Court reversed. USPTO appealed.
    • The Appellate Court found that under the doctrine of utility, Manson didn’t have to show that the invention could be used for something, only that it wasn’t detrimental to the public interest.
  • The US Supreme Court reversed and denied the patent.
    • The US Supreme Court noted that in the chemical/drug field, the standard method is to first develop a process to make a chemical, then undergo years of testing to figure out what it might be good for. That doesn’t fit into the traditional way patents are granted.
    • The Court noted that there is a public good in disclosing information, so there are reasons to encourage inventors to disclose their new chemicals.
    • However, the Court found that by granting patents on chemicals for which there is no known utility, you create a monopoly that discourages the rest of the scientific community from experimenting with the chemical to figure out what the use could be.
      • “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.”
  • Basically, the Court said that in this case, if Manson had the patent, then only Manson would be racing to find out if the chemical actually did cure cancer. He might be slow and stupid. By not granting him a patent on a possibly useful chemical, all the drug companies in the world would all be racing to the answer. That would be much more efficient and beneficial to society.
    • If there are too many proprietary rights it will suppress innovation because people won’t be willing to work hard to find a use for the invention if they have to get a license to use it.
    • On the other hand, it will encourage others to ‘design around’ the patent and come up with new, potentially better compounds.
  • This case is a bit confusing because Ringwold and Rosenkrantz disclosed a use for the steroid in their patent application. But in order to win an interference claim, Manson would have to show that he reduced to practice prior to Ringwold and Rosenkrantz’s filing. In order to reduce to practice you have to know the utility. You can’t come back later and say that someone else later found a use for the invention.
    • So, at the end of the day, Manson couldn’t show that he had a use for the steroid until after Ringwold and Rosenkrantz filed their patent. So he loses the interference claim and Ringwold and Rosenkrantz get the patent.