As a community service, an educational series by the

IP and Business Law Offices of Howard L. Hoffenberg, Esq.

Copyright 2010 The IP and Business Law Offices of Howard L. Hoffenberg, Esq. All Rights Reserved.

Return to Index of Tour of US Supreme Court Patent Cases from 1961 to 1999

HOLDING: (1) A chemical process is not useful because (a) it works or (b) the yielded compound is under investigation as being useful (e.g. anti-tumor activity.) A specific benefit must exist in currently available form. (2) The rule is the same for products and processes. (3) Based on the degree of unpredictability of the compounds, an adjacent homologue having anti-tumor activity did not establish the requisite utility. (4) Until the product is shown to be useful, the metes and bounds of the monopoly are not capable of precise delineation. It may engross a vast unknowable area and confer power to block off whole areas of scientific development.

BRENNER v. MANSON, 383 U.S. 519 (March 21, 1966)

 

FACTS: The PTO refused to declare an interference on the grounds that applicant had not made a showing of utility. The invention was a process for making certain steroids that were research leads.

Tour of US Supreme Court Patent Cases from 1961 to 1999

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A Fast and Easy Way to Learn the High Points of Patent Law and Related Anti-trust Law

Community Service and

Pro Bono

In addition to this education series, Mr. Hoffenberg gives of his time to benefit the community and contribute to the quality justice in the State of California. For many years, he served as a volunteer pro tem in the Municipal Court in traffic, landlord-tenant, small claims and short cause matters. Currently, Mr. Hoffenberg serves as a volunteer arbitrator for the Dispute Resolution Service in attorney-client fee disputes and as a quasi-volunteer mediator in the Court of Appeals.