Brenner v. Manson

Brenner v. Manson

Argued November 17, 1965
Decided March 21, 1966
Full case name Brenner, Commissioner of Patents v. Manson
Citations

383 U.S. 519 (more)

86 S. Ct. 1033; 16 L. Ed. 2d 69; 1966 U.S. LEXIS 2907; 148 U.S.P.Q. (BNA) 689
Court membership
Case opinions
Majority Justice Fortas, joined by Justice Warren, Justice Black, Justice Clark, Justice Brennan, Justice Stewart, Justice White
Dissent Justice Harlan, joined by Justice Douglas
Laws applied
35 U.S.C. § 101

Brenner v. Manson, 383 U.S. 519 (1966), was a United States Supreme Court case in which the Court held that a novel process for making a known steroid did not satisfy the utility requirement because the patent applicants did not show that the steroid served any practical function. The Court ruled that "a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute."[1] Practical or specific utility is the requirement for an invention to have a particular purpose.[1]

The case is known for the statement "a patent is not a hunting license."[2]

Appellate jurisdiction issue


The Manson case is the first in which the Court granted a writ of certiorari in an appeal of a patent office rejection of a patent application. For many years there had been uncertainty whether the United States Court of Customs and Patent Appeals (CCPA) was an Article III court, and thus one as to which the Supreme Court had certiorari jurisdiction.[3]

For many years, almost until the eve of the Manson case, the Solicitor General had opposed petitions for certiorari by disappointed patent applicants on the basis that the CCPA was an Article I court to which the Supreme Court's certiorari jurisdiction did not extend. In Lurk v. United States,[4] however, the Court held that judges of the CCPA (as well as those of the Court of Claims) were Article III judges.[5] In the Manson case the Court expressly held that certiorari was available to review CCPA decisions.[6]

This paved the way for the US Government to seek review in the Supreme Court of judgments of the CCPA (and its successor the Federal Circuit) reversing denials of patent applications, which it did beginning with Manson.

References

  1. 1 2 Brenner v. Manson, 383 U.S. 519 (1966).
  2. ↑ 383 U.S. at 536. What Justice Fortas meant by this quip was that patents should not be granted so that the patentee could look for (hunt) a utility after gaining possession of a patent monopoly.
  3. ↑ In Ex parte Bakelite Corp., 279 U.S. 438 (1929), and Williams v. United States, 289 U.S. 553 (1933), the Court had held that the CCPA and Court of Claims were Article I courts. See also Postum Cereal Co. v. California Fig Nut Co.,272 U. S. 693 (1927). However, subsequent legislation made the matter unclear.
  4. ↑ 370 U.S. 530 (1962).
  5. ↑ However, the Lurk decision expressly left open the question whether 28 U.S.C. § 1256 conferred certiorari jurisdiction over patent and trademark cases decided in the CCPA, 370 U.S. at 578 n. 49. It suggested, however, that the prior law to the contrary was a museum piece.
  6. ↑ 383 U. S. at5 528 ("We therefore conclude that § 1256 authorizes the grant of certiorari in the present case."

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