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A CASE STUDY OF INOPERABLE INVENTIONS: WHY IS THE USPTO PATENTING PSEUDOSCIENCE? - page 10 / 39

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WISCONSIN LAW REVIEW

machine, manufacture or composition of matter, or any new and useful improvement thereof.”61 Rather than bear the onerous burden of deciding usefulness on a case-by-case basis, early courts sought to construct a legal definition of “useful,” beginning with a moral prescription that useful inventions “should not be frivolous or injurious to the well-being, good policy, or sound morals of society.”62 The two- hundred-year common-law development of a legal definition of “useful” has resulted in the modern concept of “utility.”63

Modern utility standards are less concerned with morality64 than with the finely parsed meaning of words (such as “practical,” “substantial,” and “specific”) as they apply to utility.65 Fortunately, the modern requirement of utility still includes the common-sense notion that an invention that does not work as claimed (that is, one that is inoperable) cannot be useful for purposes of patentability.66 Most of the modern refinement of the utility concept67 arises from what appear to be honest and sober attempts to realistically state what the invention actually does. For example, the “specific utility” requirement arose from an attempt to patent compounds whose actual medical uses had not yet been determined.68 The inventors in In re Kirk honestly claimed that their compounds exhibited “biological activity” but gave no specific medical uses in their patent application.69 By contrast, the inventions examined in this Comment often make wildly fantastic claims of usefulness. For example, there can be no doubt that a table-top apparatus constructed out of everyday materials and capable of

61.

35 U.S.C. § 101 (2000).

62.

Lowell v. Lewis, 15 F. Cas. 1018, 1019 (1817) (“All that the law

requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society.”).

63.

For a lament on how far courts have strayed from the dictionary definition

of “useful,” see Mirabel, supra note 17, at 814. For a defense of the courts, see Brenner v. Manson, 383 U.S. 519, 529 (1966). In referring to the word “useful,” the court notes that “a simple, everyday word can be pregnant with ambiguity when applied

to the facts of life.” Id.

64.

See Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1366-67

(Fed. Cir “useful”).

. 1999) (containing a discussion of the history of moral interpretations of

  • 65.

    See Mirabel, supra note 17, at 813-14.

  • 66.

    In re Harwood, 390 F.2d 985, 989 (C.C.P.A. 1968) (“An inoperative

invention, of course, does not satisfy the requirement of 35 U.S.C. section 101 that an invention be useful.”).

    • 67.

      For a recent summary of the modern law of utility, see In re Fisher, 421

  • F.

    3d 1365, 1370-71 (Fed. Cir. 2005).

    • 68.

      In re Kirk, 376 F.2d 936, 942-46 (C.C.P.A 1967); see also In re Fisher,

421 F.3d at 1379 (upholding a rejection for specific utility for genetic markers called express sequence tags).

69.

In re Kirk, 376 F.2d at 939.

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