Making Patents Useful

scheme.3 It is codified in § 101 of the current patent statute, which states in relevant part that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter . . .may obtain a patent." 4 Utility is regarded as an essential condition for patentability.5 But what does it mean to be useful?The Oxford English Dictionary defines the term simply as "beneficial" 6 or "fit[] for some desirable purpose or valuable end." 7 The abstract and imprecise nature of the term invites subjective interpretations because virtually everything can be used by someone for something.8 But does utility have a similar de minimis meaning in patent law?Congress has never defined "useful" in the patent statute, or even specified from whose perspective utility is to be determined.So it seems that a thing has utility as long as it can provide some benefit.9 Perhaps this is why, throughout most of the history of U.S. patent law, utility was given short shrift.This de minimis interpretation is often attributed to Justice Story, who in the 1817 case Bedford v. Hunt defined a useful invention as "one as may be applied to some beneficial use in society, in contradistinction to an invention, which is injurious to the morals, the health, or the good order of society." 10 3. See, e.g., Patent Act of 1793, ch.11, § 1, 1 Stat.318, 318-21 (repealed 1836) (granting patent eligibility to a person who has "invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement"); Patent Act of 1836, ch.357, § 6, 5 Stat.117, 119 (repealed 1870) (identical language); Patent Act of 1870, ch.230, § 24, 16 Stat.198, 201 (repealed 1952) (same).Until the middle of 4. 35 U.S.C. § 101 (2006) (emphasis added).5. Graham v. John Deere Co., 383 U.S. 1, 12-13 (1966) (identifying the three explicit conditions for patentability as novelty, utility, and nonobviousness); Stiftung v. Renishaw PLC, 945 F.2d 1173, 1180 (Fed.Cir.1991) ("[Utility is] a fundamental requirement of American patent law, dating back some two-hundred years . . ..").6. 19 OXFORD ENGLISH DICTIONARY 356 (2d ed.1989) (defining "useful").7. Id. at 368 (defining "utility").8.Even a failed experiment has utility because it eliminates whatever approach was under consideration, makes way for an alternative, and always produces data from which others can learn.See, e.g., NEIL BALDWIN, EDISON 51 (1995) (quoting Thomas Edison's remarks to financial supporters that "[n]o experiments are useless").9. This is not uncommon in patent law.See John F. Duffy, The Federal Circuit in the Shadow of the Solicitor General, 78 GEO.WASH.L. REV.518, 544 (2010) (explaining that patent law "has traditionally had a common law feel to it" because the courts receive little guidance from statutory sources).10. 3 F. Cas.37, 37 (Story, Circuit Justice, C.C.D. Mass.1817) (No. 1217) (emphasis added).15 tension between the C.C.P.A. and the Patent Office, 16 and sharp ideological disagreements among Supreme Court Justices.17 Though the moral and public welfare requirements were ultimately jettisoned, 18 the modern utility requirement set forth in Manson and its progeny is even more subjective than the one it replaced.Not only must the disclosed utility be credible, 19 11.See infra Part I.A. it 12. 383 U.S. 519, 533 (1966).13.See infra Part I.C.2.14. See William D. Noonan, Patenting Medical Technology, 11 J. LEGAL MED.263, 263-69 (1990).15.The C.C.P.A. was a five-judge Article III court on the same level as the U.S. Courts of Appeals.See U.S. Court of Customs and Patent Appeals (Successor to the Court of Customs Appeals), 1910-1982, FED.JUDICIAL CTR., http://www.fjc.gov/history/home.nsf/page/courts_special_cpa.html(last visited Nov. 25, 2013).It was abolished by the Federal Courts Improvement Act of 1982, Pub.L. No. 97-164, 96 Stat. 25 (codified as amended in scattered sections of 28 U.S.C.).Soon after its creation, the Federal Circuit adopted the C.C.P.A. decisional law as binding precedent.South Corp. v. United States, 690 F.2d 1368, 1370 (Fed.Cir.1982) (en banc).16.See infra Part I.C.1.17. See infra note 119 and accompanying text.18