Utility

Question 1

Where does the utility requirement come from?

Answer 1

101: new and “useful”
112: in the manner and process of “using” it

Question 2

What are the three flavors of the utility requirement?

Answer 2

1. practical/specific utility (important one)
2. beneficial utility (moral one - we like it)
3. operability (does it do what it says it will do)

Question 3

What is practical/specific utility?

Answer 3

We want to know that there is a genuine use for your product NOW (paperweight - landfill)

Doesn’t have to be a good use - diapers for birds is OK

Question 4

What are the cases about practical/specific utility?

Answer 4

1. Fisher
2. Brana
3. Brenner

Question 5

How do you patent a new use?

Answer 5

as a new process; can’t patent the product again

Question 6

How does operability work?

Answer 6

There is a presumption that it works, but if people bring evidence that it doesn’t work, then have to prove it up

doesn’t really come up; usually just comes up for crazy people or people making mistakes on drawings or w/e

Question 7

What is the famous case of beneficial utility?

Answer 7

the machines that spin juice for display don’t have juice that they actually sell - someone sued the patent holder on that device so that he could use it without paying

Question 8

What are the challenges of beneficial utility?

Answer 8

1. lack of statutory authority
2. a good lawyer could almost always come up with a good story for why the invention is good for society
3. when no patents for bad stuff, everyone can use them

Question 9

What about beneficial utility and legality?

Answer 9

Lichtman likes that you can patent stuff that is illegal, so that there is a prior art history when/if the law does change

let people make investments - bets that something like prohibition will be lifted

Question 10

What was Brana about?

Answer 10

cancer in mice

Question 11

If I have a process that sometimes cures cancer in mice, is this useful enough? (i.e., what was Brana worried about?)

Answer 11

Brana says no; worried about stacking patents; if you stack too many patents, that discourages later inventive activity, in terms of money and complication of licensing

Question 12

What is the balance on specific utility?

Answer 12

want to encourage finding new things but at the same time not stacking patents to discourage later innovation

Question 13

What is the difference in meaning of “too early” to investors and the patent system?

Answer 13

to the patent system, too early is about not stacking

to the investors, too early is about I don’t know if the risk is worth it

Question 14

Do the courts say that we say too early because we’re afraid of stacking patents?

Answer 14

No, that’s the scholars

Question 15

What are the four things to remember on specific?

Answer 15

1. If I have a process for making compound x, and I don’t know what to do with compound x = no patent
2. If I have a process for making compound x, and I do know what to do with x, then patent
3. If I have a product and I don’t know what to do with it, no patent
4. If I have product and I know of one use, I can patent the product but not the use