Action in district court to obtain patent on an invention relating to a medical compound with the purported purpose of testing the function of the human liver. The district court found that the invention lacked utility, and that a rejection of the patent was thus justified. First, the court defined utility as a broad term that “implies among other things capacity to perform the function or to attain the result claimed by the applicant in his disclosure.†Id. at 9. The test of utility, the court found, is “will the invention attain the purpose and will it operate as disclosed and claimed by the inventor?†Id. Additionally, the court noted that “the burden is on the applicant for a patent to prove that he is entitled to it, and therefore the onus is on him to show that the invention will operate as disclosed in the application and will achieve its objective.†Id.
With regard to the medical compound in question, the court found that the number of tests performed and results obtained were not yet sufficient to justify an “affirmative finding†of utility. Id. The court justified this holding on a public policy basis, noting that “the granting of such a patent gives a kind of official imprimatur to the medicine in question on which as a moral matter some members of the public are likely to rely. . . . {I}t is right and proper that the Patent Office should be very careful and perhaps even reluctant to grant a patent on a new medical formula until it has been thoroughly tested and successfully tried by more than one physician.†Id.
Notably, the court dismissed the patent applicant’s complain without prejudice, stating that “the Court is of the opinion that its decision should not be res judicata against some future application if after further tests that are deemed adequate the utility of the compound is established.†Id.
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Tuesday 30 of September, 2008 14:14:23 GMT by Unknown
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Tuesday 30 of September, 2008 16:58:58 GMT by Unknown