Manson was a chemist who invented a new process for
manufacturing a type of steroid. He applied for a patent for his process.
The patent examiner denied the patent. Manson appealed.
The patent examiner found that the chemicals Manson was
making with his process had no utility, and you can't get a patent for
making something that's totally useless.
Manson argued that several similar steroids were
undergoing screening as possible cancer drugs.
The Board of Appeals affirmed the decision. Manson
appealed to the Court of Customs and Patent Appeals.
"It is our view that the Statutory requirement of
usefulness of a product cannot be presumed merely because it happens to
be closely related to another compound which is known to be useful."
The Court of Customs and Patent Appeals (CCPA) reversed.
The US Patent Office appealed (through their Commissioner, Brenner)
The CCPA found that it is not necessary to show utility
for a product, you just have to show that it isn't detrimental to the
public interest.
The US Supreme Court reversed.
The US Supreme Court went back to the language of the
original 1790 patent law which said, "whoever invents or discovers
any new and useful process, machine…may obtain a patent
therefore…"
Manson argued over what the term useful meant.
Should it be read to mean that the process he invented was useful
in created the intended steroid? Or did it mean that the steroid that
the process produced was useful?
Manson had invented a useful process for producing a
useless chemical.
The US Supreme Court felt that giving Manson a patent for
a process to produce a chemical with no known uses would discourage
others from trying to find a use for that chemical.
A patent gives the owner a monopoly. In order to
deserve that monopoly you have to show that your idea is really useful
to society.
On the other hand, granting a patent would certainly
encourage the inventor to look for a use for the product, wouldn't it?
In a dissent, it was argued that chemistry is an inexact
science and has many interrelated fields. It's not always possible to
know exactly what commercial applications are going to appear when a new
chemical or process is invented. By denying Manson's patent, the Court is
actually discouraging research into potential applications for the
steroid.
There was a commercial market for the steroid. Research
scientists bought it for their research. Isn't that useful?
