Brenner v. Manson
| Brenner v. Manson | |
|---|---|
|
|
| Argued November 17, 1965 Decided March 21, 1966 |
|
| Full case name | Brenner, Commissioner of Patents v. Manson |
| Citations | 383 U.S. 519 (more)
86 S. Ct. 1033; 16 L. Ed. 2d 69; 1966 U.S. LEXIS 2907; 148 U.S.P.Q. (BNA) 689
|
| Court membership | |
|
|
| Case opinions | |
| Majority | Fortas, joined by Warren, Black, Clark, Brennan, Stewart, White |
| Dissent | Harlan, joined by Douglas |
| Laws applied | |
| 35 U.S.C. § 101 | |
Brenner v. Manson, 383 U.S. 519 (1966), was a decision of the United States Supreme Court in which the Court held that a novel process for making a known steroid did not satisfy the utility requirement because the patent applicants did not show that the steroid served any practical function. The Court ruled that "a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute." Practical or specific utility, so that a "specific benefit exists in currently available form" is thus the requirement for a claimed invention to qualify for a patent.
The case is known for the statement "a patent is not a hunting license."
The Manson case is the first in which the Court granted a writ of certiorari in an appeal of a patent office rejection of a patent application. For many years there had been uncertainty whether the United States Court of Customs and Patent Appeals (CCPA) was an Article III court, and thus one as to which the Supreme Court had certiorari jurisdiction.
For many years, almost until the eve of the Manson case, the Solicitor General had opposed petitions for certiorari by disappointed patent applicants on the basis that the CCPA was an Article I court to which the Supreme Court's certiorari jurisdiction did not extend. In Lurk v. United States, however, the Court held that judges of the CCPA (as well as those of the Court of Claims) were Article III judges. In the Manson case the Court expressly held, unanimously, that certiorari was available to review CCPA decisions.
This paved the way for the US Government to seek review in the Supreme Court of judgments of the CCPA (and its successor the Federal Circuit) reversing denials of patent applications, which it did beginning with Manson.
Justice Abe Fortas delivered the unanimous opinion of the Court on the jurisdictional issue in this case and the 7-2 opinion of the Court on the issue of utility. Justice John Marshall Harlan II, joined by Justice William O. Douglas, dissented on the utility issue.
...
Wikipedia