Brenner v. Manson/Concurrence Harlan

by John Marshall Harlan II

United States Supreme Court

383 U.S. 519

Edward J. BRENNER, Commissioner of Patents, Petitioner,  v.  Andrew John MANSON.

 Argued: Nov. 17, 1965. --- Decided: March 21, 1966

Mr. Justice HARLAN, concurring in part and dissenting in part.

While I join the Court's opinion on the issue of certiorari jurisdiction, I cannot agree with its resolution of the important question of patentability.

Respondent has contended that a workable chemical process, which is both new and sufficiently nonobvious to satisfy the patent statute, is by its existence alone a contribution to chemistry and 'useful' as the statute employs that term. ^[1] Certainly this reading of 'useful' in the statute is within the scope of the constitutional grant, which states only that '(t)o promote the Progress of Science and useful Arts,' the exclusive right to 'Writings and Discoveries' may be secured for limited times to those who produce them. Art. I, § 8. Yet the patent statute is somewhat differently worded and is on its face open both to respondent's construction and to the contrary reading given it by the Court. In the absence of legislative history on this issue, we are thrown back on policy and practice. Because I believe that the Court's policy arguments are not convincing and that past practice favors the respondent, I would reject the narrow definition of 'useful' and uphold the judgment of the Court of Customs and Patent Appeals (hereafter CCPA).

The Court's opinion sets out about half a dozen reasons in support of its interpretation. Several of these arguments seem to me to have almost no force. For instance, it is suggested that '(u)ntil the process claim has been reduced to production of a product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation' (p. 534, ante) and '(i)t may engross a vast, unknown, and perhaps unknowable area' (p. 534, ante). I fail to see the relevance of these assertions; process claims are not disallowed because the products they produce may be of 'vast' importance nor, in any event, does advance knowledge of a specific product use provide much safeguard on this score or fix 'metes and bounds' precisely since a hundred more uses may be found after a patent is granted and greatly enhance its value.

The further argument that an established product use is part of '(t)he basic quid pro quo' (p. 534, ante) for the patent or is the requisite 'successful conclusion' (p. 536, ante) of the inventor's search appears to beg the very question whether the process is 'useful' simply because it facilitates further research into possible product uses. The same infirmity seems to inhere in the Court's argument that chemical products lacking immediate utility cannot be distinguished for present purposes from the processes which create them, that respondent appears to concede and the CCPA holds that the products are nonpatentable, and that therefore the processes are nonpatentable. Assuming that the two classes cannot be distinguished, a point not adequately considered in the briefs, and assuming further that the CCPA has firmly held such products nonpatentable, ^[2] this permits us to conclude only that the CCPA is wrong either as to the products or as to the processes and affords no basis for deciding whether both or neither should be patentable absent a specific product use.

More to the point, I think, are the Court's remaining, prudential arguments against patentability: namely, that disclosure induced by allowing a patent is partly undercut by patent-application drafting techniques, that disclosure may occur without granting a patent, and that a patent will discourage others from inventing uses for the product. How far opaque drafting may lessen the public benefits resulting from the issuance of a patent is not shown by any evidence in this case but, more important, the argument operates against all patents and gives no reason for singling out the class involved here. The thought that these inventions may be more likely than most to be disclosed even if patents are not allowed may have more force; but while empirical study of the industry might reveal that chemical researchers would behave in this fashion, the abstractly logical choice for them seems to me to maintain secrecy until a product use can be discovered. As to discouraging the search by others for product uses, there is no doubt this risk exists but the price paid for any patent is that research on other uses or improvements may be hampered because the original patentee will reap much of the reward. From the standpoint of the public interest the Constitution seems to have resolved that choice in favor of patentability.

What I find most troubling about the result reached by the Court is the impact it may have on chemical research. Chemistry is a highly interrelated field and a tangible benefit for society may be the outcome of a number of different discoveries, one discovery building upon the next. To encourage one chemist or research facility to invent and disseminate new processes and products may be vital to progress, although the product or process be without 'utility' as the Court defines the term, because that discovery permits someone else to take a further but perhaps less difficult step leading to a commercially useful item. In my view, our awareness in this age of the importance of achieving and publicizing basic research should lead this Court to resolve uncertainties in its favor and uphold the respondent's position in this case.

This position is strengthened, I think, by what appears to have been the practice of the Patent Office during most of this century. While available proof is not conclusive, the commentators seem to be in agreement that until Application of Bremner, 182 F.2d 216, 37 C.C.P.A. (Pat.) 1032, in 1950, chemical patent applications were commonly granted although no resulting end use was stated or the statement was in extremely broad terms. ^[3] Taking this to be true, Bremner represented a deviation from established practice which the CCPA has now sought to remedy in part only to find that the Patent Office does not want to return to the beaten track. If usefulness was typically regarded as inherent during a long and prolific period of chemical research and development in this country, surely this is added reason why the Court's result should not be adopted until Congress expressly mandates it, presumably on the basis of empirical data which this Court does not possess.

Fully recognizing that there is ample room for disagreement on this problem when, as here, it is reviewed in the abstract, I believe the decision below should be affirmed.

Notes

1. The statute in pertinent part is set out in the Court's opinion, p. 529, ante.
2. Any concession by respondent would hardly be controlling on an issue of this general importance, but I am less clear than the Court that such a concession exists. See, e.g., Brief for Respondent, p. 53. As to the CCPA, it is quite true that that court purports in the very case under review and in others to distinguish product patents, although its actual practice may be somewhat less firm. See Application of Adams, 316 F.2d 476, 50 C.C.PA. (pat.) 1185. Application of Nelson, 280 F.2d 172, 47 C.C.P.A. (Pat.) 1031.
3. See, e.g., the statement of a Patent Office Examiner-in-Chief: 'Until recently it was also rather common to get patents on chemical compounds in cases where no use was indicated for the claimed compounds or in which a very broad indication or suggestion as to use was included in the application. (Bremner and another later ruling) * * * have put an end to this practice.' Wolffe, Adequacy of Disclosure as Regards Specific Embodiment and Use of Invention, 41 J.Pat.Off.Soc. (1959). The Government's brief in this case is in accord: '(I)t was apparently assumed by the Patent Office (prior to 1950) * * * that chemical compounds were necessarily useful * * * and that specific inquiry beyond the success of the process was therefore unnecessary * * *.' Brief for the Commissioner, p. 25. See also Cohen & Schwartz, Do Chemical Intermediates Have Patentable Utility? 29 Geo.Wash.L.Rev. 87, 91 (1960); Note, 53 Geo.L.J. 154, 183 (1964); 14 Am.U.L.Rev. 78 (1964).