Manson filed for a patent for his process of creating a steroid that was a homologue to a steroid currently being studied for anti-cancer treatment.
Procedural History:
USPTO examiner denied application.
Board of Appeals in USPTO affirmed.
Court of Customs and Patent Appeals reversed.
SCOTUS reversed, application denied.
Issues:
What are the requirements for a patent?
What is meant by utility/usefulness as a requirement for a patent for a chemical process?
Holding/Rule:
To obtain a patent, the inventor must meet five requirements, patentable subject matter, utility, novelty, non-obviousness, and adequacy of disclosure.
Until a process is refined and developed to the point where there is a benefit derived to the public from the patent, there is insufficient justification to allow the patent (to engross what may prove to be a broad field).
Reasoning:
One may patent only that which is useful.
Manson argues 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.
Any process is useful if it produces a compound whose potential usefulness is under investigation.
The USPTO held that, despite the useful homologue, Manson did not disclose a sufficient likelihood that the steroid would have similar tumor-inhibiting characteristics.
Since steroids in this field are somewhat unpredictable and because of the technical nature of the question, we will defer to the judgment of the USPTO.
A process patent in the chemical field, which has not been developed to the degree of specific utility, creates a monopoly where the boundaries of such monopoly are unknown at the time.
Such a patent may confer power to block off whole areas of scientific development without compensating benefit the public.
The basic quid pro quo in patents is that the inventor gets the patent monopoly and the public gets the benefit derived from the invention.
These arguments apply for a product created by such a process as well.
A product may not be patented absent a showing of utility greater than shown here.
A patent is not a hunting license; it is not a reward for the search, but compensation for its successful completion.
"A patent system must be related to the world of commerce rather than to the realm of philosophy."
