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Utility Jan. 28, 2008 Prof Merges Utility – Section 101 101. Whoever invents and new AND USEFUL machine, manufacture, . . . Main Trouble Areas No known utility (“perpetual motion machines”) Newman v. Quigg, 877 F.2d 1575 [ 11 USPQ2d 1340] (Fed. Cir. 1989) (claims to a perpetual motion machine ruled inoperable) Malicious utility a useful invention is one which may be applied to a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant Justice Story View Appendix, Note on the Patent Laws, 3 Wheat. 13, 24. See also Justice Storys decisions on circuit in Lowell v. Lewis, 15 Fed. Cas. 1018 (No. 8568) (C. C. D. Mass.), and Bedford v. Hunt, 3 Fed Cas. 37 (No. 1217) (C. C. D. Mass.). Brenner v Manson This is not to say that we mean to disparage the importance of contributions to the fund of scientific information short of the invention of something useful, or that we are blind to the prospect that what now seems without use may tomorrow command the grateful attention of the public. Brenner, cont’d But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. [A] patent system must be related to the world of commerce rather than to the realm of philosophy. * * * In re Brana 34 U.S.P.Q.2d 1436 C.A.Fed. Decided March 30, 1995 Brana cont’d FDA approval, however, is not a prerequisite for finding a compound useful within the meaning of the patent laws. Usefulness in patent law, and in particular in the context of pharmaceutical inventions, necessarily includes the expectation of further research and development.. Were we to require Phase II testing in order to prove utility, the associated costs would prevent many companies from obtaining patent protection on promising new inventions, thereby eliminating an incentive to pursue, through research and development, potential cures in many crucial areas such as the t