Brenner v. Manson

PETITIONER:Brenner
RESPONDENT:Manson
LOCATION:Congress

DOCKET NO.: 58
DECIDED BY: Warren Court (1965-1967)
LOWER COURT:

CITATION: 383 US 519 (1966)
ARGUED: Nov 17, 1965
DECIDED: Mar 21, 1966

Facts of the case

Question

Audio Transcription for Oral Argument – November 17, 1965 in Brenner v. Manson

Earl Warren:

Number 58, Edward J. Brenner, Commissioner of Patents, Petitioner, versus Andrew John Manson.

Mr. Doolittle.

J. William Doolittle, Jr.:

Mr. Chief Justice, and may it please the Court.

I move the admission of Mr. Paul Bender of the District of Columbia Bar for the purposes of arguing this case, Number 58.

Earl Warren:

Motion is granted.

Mr. Bender.

Paul Bender:

Mr. Chief Justice, and may it please the Court.

This case raises two important questions in the administration of the patent system, one substantive and one procedural.

The question on the merits is whether a patent may be obtained on a process whose only function is to produce a useless product.

The Court of Customs and Patent Appeals has held that such a process is patentable regardless of the total lack of utility of the sole product of the process.

That is the court has held that a process to produce, for example, garbage or sewage, which has no utility whatsoever, would be a valid patent.

It’s also held that a process could produce some material which just is an in dirt lump of material, you can’t do anything, you don’t know what to do with it would be a patentable process because produces a product.

In our view —

William O. Douglas:

I’ve read the other day that they’re making wonderful things out of garbage these days.

Paul Bender:

If you can make wonderful things out of garbage, then that would be a useful process.

I was using garbage as a — a generic term to things that have no use.

To the extent, Mr. Justice Douglas, that you assume that everything is useful, then the issue in this case doesn’t arise, the Court of Customs and Patent Appeals assumed that the product of the this process was in fact useless and held that nevertheless the process to produce the product was a patentable useful process.

Now, this apparently is true in, for example, the industry in which this case arises, the drug industry and chemical industry, compounds that produce constantly, which have no known utility and lots of them never have any utility.

Potter Stewart:

But last time, as Mr. Justice Douglas just pointed out, eventually do.

Paul Bender:

That’s true.

Potter Stewart:

We’ve all read about the days when they used to dump gasoline — as a — as a waste byproduct when they were making the kerosene —

Paul Bender:

That’s true.

Well, our submission is that if there is any present capability of utility, if you can show that the process is useful or if you can show that there are some real substantial basis to believe that it will become useful —

William J. Brennan, Jr.:

(Voice Overlap) Mr. Bender is that maybe you can’t now.Yes.

Potter Stewart:

But who is to say that it is not going to be anything that you might mention that can be very useful.

Paul Bender:

That’s true.

You may say hypothetically that any product may someday be useful.

Therefore, you might say that any product for example ought to be patentable.

That is not true.

It is conceded in this case by the court below, conceded by the respondents that used things which are presently useless are not patentable regardless of the speculative fact that someday they may be useful.

Paul Bender:

That’s clearly true as the products — it’s clearly true as to machines.

We see no reason to have a different view as to processes.

And Mr. Justice Stewart, the reason for that I think is that there’s a lot of harm in giving patents on presently useless things because patents have a preclusive effect.

You can use a patent if you get it to stop other people from finding the use.

Now, if you balance those things together, it seems as you clearly come out with the judgment that it ought to be not patentable, even though of course there’s a possibility that it may be useful but you’ve got to balance that against the harm.

In any case —

Potter Stewart:

Your thought is that — that in order to find out or to have any hope of someday ascertaining whether Product A is useful, you should not have a patent on them.

Paul Bender:

Right, just on the hope that it may be useful.

You’ve got to show more than that.

And that’s been the clear — that’s been the clear course of decision in the Patent Office.

That’s what the Court of Customs and Patent Appeals held in 1950 in words which couldn’t be any more explicit, and it’s only recently that they have — that they have retreated from that.

Before reaching the merits, however, if I may, there is a jurisdictional question in this case, namely whether the court has jurisdiction on writ of certiorari to review decisions such as this one of the Court of Customs and Patent Appeals in patent and also in trademark cases.

This question was touched upon in this Court’s decision three years ago in Glidden against Zdanok where the Court held that the Court of Customs and Patent Appeals is an Article III court exercising the judicial power.

In that case, however, the Court explicitly left open the precise question involved here that is whether 28 U.S.C. 1256, which is the relevant jurisdictional statute, does indeed confer jurisdiction on this Court to review patent or trademark cases in the Court of Customs and Patent Appeals.

We believe this —

Glidden disposed of the constitutional aspect of the —

Paul Bender:

Yes, Glidden disposed of the constitutional question, held the Court of Customs and Patent Appeals to be an Article III court.

The statute is unqualified.

It’s says all cases in the Court of Customs and Patent Appeals.

We believe that the statute 1256 does confer jurisdiction and that the Court, in fact, therefore, can resolve the issue on the merits in this case.

I would like now, as I’ve said, to address myself to the jurisdictional question before coming to the — to the merits.

So the purpose of doing this, I’d like to give some background in the way Patent Office decisions are reviewable because I think that’s necessary to see the importance of the jurisdictional question.

When a patent is denied by the Patent Office, there are two methods of judicial review of that Patent Office denial, which are provided by the statute.

In the first place, there’s what’s a called a civil action.

It used to be called an action in equity against the Commission of Patents in the District Court for the District of Columbia, that’s provided by 35 U.S.C. Section 145 in the Patent Act.

The District Court’s decision is of course reviewable by the Court of Appeals.

The District Court’s decision as I say called a civil action.

No one’s ever had any doubt that that civil action is within the judicial power.

It is therefore reviewable by the Court of Appeals and the Court of Appeals’ decision is in turn clearly reviewable and was always been recognized to be reviewable by this Court on certiorari.

And as our brief points out, several of such decisions have been reviewed here without noticing any difficulty, and I think there’s no question that that route of review, District Court civil action, Court of Appeals review of the District Court is reviewable here on certiorari.

Paul Bender:

The other mode of review is the one that’s involved in this case.

If the patent’s denied, instead of going to the District Court, you can take what’s called an appeal to the Court of Customs and Patent Appeals.

That’s provided by Sections 141 to 144 of the Patent Act and also 28 U.S.C. Section 1542.

These two routes are alternative.

That is, each statute provides that if you take the other one, you can’t use the one involved in the statute.

You can’t go to the District Court if you’ve appealed to the Court of Customs and Patent Appeals and an appeal to the Court of Customs and Patent Appeals is clearly provided to constitute a waiver of the right to go to the District Court, that’s in Section 141 of the Patent Act.

Now, as I stated before, if you go to the District Court, there’s no question that certiorari jurisdiction is in this Court to review the decision of the Court of Appeals’ reviewing decision of the District Court.

We urge that the same result should apply if the route you take is through the Court of Customs and Patent Appeals.

Now, that that court has been clearly recognized to be a court exercising the judicial power just like the Court of Appeals for the District of Columbia is.

As I say, the statute, if that’s all one looked to, is clear that that would lead you clearly to that result.

It provides that cases in the Court of Customs and Patent Appeals may be reviewed by the Supreme Court by writ of certiorari.

In addition, any policy reason you can think of regarding the issue of jurisdiction here, it seem to us to favor review of the Court of Customs and Patent Appeals on the same terms as review of the Court of Appeals.

The two courts occupies, I think I’ve shown, very similar positions in the scheme of review of the Patent Office, and, as in fact happened in this case, conflicts of principle may arise between them.

You may have the Court of Appeals for the District of Columbia adopting one rule as to patentability.

For example, they have clearly accepted our position on the merits of this case and you may have the Court of Customs and Patent Appeals taking the opposite position.

In that circumstance, it seems to us, that all the policies of the judicial code in the certiorari jurisdiction clearly favor giving this Court the ability to resolve that conflict.

Without it, you put the Patent Office in the terrible dilemma.

They’ve got one of the courts to which their decisions can be taken holding one thing, another court holding another.

The choice as to which route of review to take is in the patent applicant is unsuccessful.

I take it that would coerce the Patent Office to accept the rule, which is most favorable to the patent applicant because if they reject that rule, and accept the least favored one, they’ll always be reviewed in the court that accepts the other rule, the more favorable one.

And if that court is the Court of Customs and Patent Appeals as it is in this case, there’s no review here unless there is certiorari jurisdiction and the Patent Office, as I say, has put in clearly on untenable position.

Also, I think you can look to the term of the Patent Act here.

There is a great public interest in eliminating patents which are in fact invalid even before an infringement proceeding.

It can always be even if the Court of Customs and Patent Appeals erroneously grants the patent, that issue can later be tested in an infringement proceeding.

But what you have meanwhile is this patent which is in fact invalid in existence and it will obviously act to some discouragement to other people.

They may never want to raise the issue.

So again, it seems to us that that policy, the policy of the Patent Act clearly militates in favor of giving this Court the power to review an erroneous decision of the Court of Customs and Patent Appeals.

One would expect that not too many occasions would arise when a decision of Court of Customs and Patent Appeals will properly invoke the certiorari jurisdiction.

It doesn’t happen very often.

This case is quite rare.

Paul Bender:

But when — with the consistency of the system, I should think would call for that jurisdiction’s existence.

Now, as Mr. Justice Harlan’s plurality opinion in the Glidden case points out however, despite the unqualified language of the section and despite what I think I’ve shown to be the clear policies of the judicial code favoring certiorari jurisdiction, the doubts do exist regarding where the Section 1256 should be read as written to confer jurisdiction.

And I take it that is what led the Court to put in the expressed disclaimer in Glidden.

But we have reexamined these doubts and we think that they don’t stand in the way.

The doubts are entirely historical and they flow entirely from this Court’s decision in the Postum Cereal Company case against the California Fig Nut Company in 272 U.S.

The case was decided in 1927.

At that time, this appeal jurisdiction, which is now on the Court of Customs and Patent Appeals, was in the Court of Appeals for the District of Columbia.

That is, if that time you could either go to the District Court for the civil action or you could go directly to the Court of Appeals on appeal.

The difference is you have a right to make something of a new record in the District Court, whereas in the Court of Appeals on the appeal, as now in the Court of Customs and Patent Appeals, you’ve got to use the record made before the Patent Office.

Now —

William J. Brennan, Jr.:

Excuse me, Mr. Bender.

Paul Bender:

Yes sir.

William J. Brennan, Jr.:

When you say Court of Appeals of District of Columbia, which one are you speaking of?

Paul Bender:

I mean the circuit court of the —

William J. Brennan, Jr.:

Yes.

Paul Bender:

This — the jurisdiction of the circuit court was transferred to the Court of Customs and Patent Appeals in 1929, two years after the Postum decision.

Now, in Postum, this Court held that it had, this Court, had no jurisdiction over the appeal’s jurisdiction of the Court of Appeals for the District of Columbia, because it deemed such decisions that is reviewing the Patent Office, in its words, not a judicial judgment but a mere administrative decision.

It viewed them and these are again its words, as merely an instruction to the Commissioner of patent by a court which is made part of the machinery of the Patent Office for administrative purposes.

Now, as I’ve said, in 1929, that jurisdiction, the appeal jurisdiction, was transferred to the Court of Customs and Patent Appeals.

And at that time, in transferring the jurisdiction, Congress made no affirmative provision in the statutes for review of Court of Customs and Patent Appeals, patent decisions here.

There was a provision for review of the custom’s decisions but not the patent decision.

Subsequently, and this is I think what really gives rise to the doubts which now as I say subsequently, in 1931 and 1940, in two cases in denying certiorari which was attempted to be taken here from the Court of Customs and Patent Appeals.

The Court denied certiorari and noted expressly its reliance on Postum and on the absence of any affirmative provision for review.

Now it was in — against this background that the 1948 Judicial Code literally in terms confers jurisdiction over cases, all cases in the Court of Customs and Patent Appeals.

Now, it seems to us that insofar as the decisions after the transfer to the Court of Customs and Patent Appeals, the decision’s holding that this Court has no jurisdiction over the Court of Customs and Patent Appeals, insofar as they rely as the first one of them expressly relied in part on the lack of any affirmative statutory provision for review, because none did exist at that time.

The 1948 addition to the statute providing for review in terms would seem to fill a void and confer review here of its own force of decisions of the Court of Customs and Patent Appeals.

William J. Brennan, Jr.:

That’s 1256, is it?

Paul Bender:

That’s 1256, yes.

In Glidden in fact, Mr. Justice Harlan’s plurality opinion, does seem to indicate that it was indeed the lack of affirmative provision at that time which must have been responsible for the Court’s decisions after the transfer jurisdiction of the Court of Customs and Patent Appeals.

Glidden held that the Postum decision must be taken to be limited to the statutory scheme in existence before the transfer of patent and trademark litigation to the Court of Customs and Patent Appeals.

Paul Bender:

What Glidden had in mind was that before the transfer, in fact just at the time of the Postum case, this appeal to jurisdiction was not an alternative as I described it before as being now.

That is, you didn’t have to choose between the appeal jurisdiction and the civil action jurisdiction.

You could take — you could do both.

You could try the appeal.

If you lost then you could come in as civil action.

And as Mr. Justice Harlan’s opinion in Glidden pointed out that it must have been quite likely that feature of the review at that time which led the Court in Postum to hold that it was merely advisory, part of the administrative process not a judicial function.

That was eliminated.

The cumulative effect was eliminated in 1927 shortly before the jurisdiction was transferred to the Court of Customs and Patent Appeals.

So that when the jurisdiction was transferred there, it was an alternative.

It wasn’t cumulative.

It didn’t have that administrative effect as Glidden pointed out.

And it seems to us that therefore, it may very well be that the decisions after that time, as I say in 1931 and 1940, denying certiorari for lack of jurisdiction citing Postum probably were based upon at that time the lack of any affirmative provision.

If there had been one, they would’ve come out the other way.

One was supplied in 1948 and there’s no reason if that’s what the historical analysis is.

There’s no reason now not to hear these cases, the statute in ‘48 in fact conferred to jurisdiction, but even if you assumed that, the reasons in 1930 and 1941 after the transfer of the Court of Customs and Patent Appeals were constitutional reasons.

That the Court at that time thought as the court in Postum thought despite the changes in statutory scheme that it was not a judicial thing that the Court of Customs and Patent Appeals was doing and it was not judicial jurisdiction.

That is no longer true.

Glidden clearly held, no question about it that the Court of Customs and Patent Appeals thus exercise Article III business and that everything it does is Article III business and that includes this appeal review of decisions of the Patent Office.

Now, as Justice Harlan’s opinion stated all the business of the court is fully within the category of cases of controversies.

Now, with that constitutional bar removed, even if it did exist after the transfer to the Court of Customs and Patent Appeals, I say with the constitutional bar removed, we see no reason not to read Section 1256 to mean what it says, that is that all court cases in the Court of Customs and Patent Appeals they’re reviewable here.

This is, as I say, consistent with the general jurisdiction of this Court with a general purpose to resolve conflicts, with a full conferring of jurisdiction over the Courts of Appeals, for example, the Court of Claims.

To maintain the restriction that would be wholly anomalous.

There’s nothing Congress could say now which would be any broader than what it has already said in the 1948 Code.

Even if there was a constitutional obstacle in ’48, we think it’s the sound of you to attribute to Congress at that time the purpose to confer on this Court, all the constitutional jurisdiction which this Court can exercise, that’s what its language said.

So even if there was a constitutional bar to the exercise of the jurisdiction then when the bar was removed, we see no reason now not to say that the jurisdiction goes up to the constitutional limit which would clearly permit review in these cases.

Now, we recognize that in the past, United States has in briefs in opposition in petitions attempted that we filed from the Court of Customs and Patent Appeals, submitted to the court that no jurisdiction did exist in this Court.

Now, that view originated before Glidden and Zdanok had made it clear either that Postum was very narrowly based so that there weren’t any constitutional doubts, no constitutional bar in any way.

Contemporaneously with Glidden, we said to the court that we thought the issue now had become quite doubtful.

And since Glidden in briefs in opposition, we have submitted to the Court that the question should be reexamined in light of the doubts raised by Glidden.

We, as I say, reexamined it and I think that I’ve shown that reexamination in light of Glidden leads you with some confidence to conclude that Section 1256 does indeed confer jurisdiction here now in accordance with its plain language.

Paul Bender:

It’s our understanding that respondents here agree generally with our conclusion that jurisdiction exists.

They seem to argue, however, that the jurisdiction which exists may only be invoked by one party.

That is the patent applicant.

If he happens to be unsuccessful in the Court of Customs and Patent Appeals as he was unsuccessful before the Patent Office.

But they argue that the jurisdiction may not be invoked by the Commissioner if his refusal to grant a patent is overruled by the Court of Customs and Patent Appeals.

We see little sense in this distinction.

No sense at all, as a matter of fact, and it is also totally unjustified by the statute which just these cases shall be reviewed.

All of the reasons for resolving conflicts, all of the reasons for giving the Patent Office a clear guide as to what to do would be frustrated if you say that when the Commissioner lost in the Court of Customs and Patent Appeals, he couldn’t go to the Supreme Court even though the patent applicant could.

Again, the Court of Customs and Patent Appeals could, as it did in this case, adopt a more liberal view against the Commissioner and there’d be no way he could resolve this dispute, even though he may very well be right and even though the Court of Appeals for the District of Columbia was on his side.

Byron R. White:

Mr. Bender, is the Board of Appeals in the Patent Office, say, under the control of the Commissioner or not?

Paul Bender:

I don’t know what control means —

Byron R. White:

Well I mean that —

Paul Bender:

— the statute says the Commissioner is in charge of the whole Patent Office.

Byron R. White:

Yes.

Paul Bender:

The Board of Appeals is part of the Patent Office.

Byron R. White:

He can’t go up from there, can he?

Paul Bender:

No he is part of the Board of Appeals.

Byron R. White:

Yes.

Paul Bender:

It would be wholly anomalous after they —

Byron R. White:

It would, that’s what I wanted to know.

Paul Bender:

Yes, there’s no question that he cannot go.

The statute provides —

Byron R. White:

But he’s part of the Board.

Paul Bender:

Yes, he’s a member of the Board.

And I take it the reason is that he’s not only a member of the Board but the Board is under his jurisdiction, he is the head of the Patent Office, it would make any sense.

The only reason to which they give is indeed what Mr. Justice White just mentioned.

Namely, that the Commissioner is the — cannot go to the Court of Customs and Patent Appeals, and so they say therefore the Commissioner shouldn’t be able to go to the Supreme Court.

Well, the reason the Commissioner can’t go to the Court of Customs and Patent Appeals is what we’ve just said.

It’s his own decision.

He couldn’t challenge the decision he have just rendered, but the Court of Customs and Patent Appeals can as it has here decide against him.

Paul Bender:

And in view of that, I see no reason why he shouldn’t then be able to go to invoke the jurisdiction of this Court.

Hugo L. Black:

What is the effect of a judgment of the Court of Customs and Patent Appeals sustaining the validity of a patent that’s issued in this one?

Paul Bender:

The effect of the judgment?

Hugo L. Black:

Yes.

Paul Bender:

Unless reviewed —

Hugo L. Black:

Oh, it’s not appealed then, not reviewed by the —

Paul Bender:

It forces the Commissioner to issue the patent.

Hugo L. Black:

Yes, but then supposed that question to that validity is raised when it gets into the District Court.

Paul Bender:

That can be reexamined —

Hugo L. Black:

(Voice Overlap)

Paul Bender:

— by people who were not parties to that decision.

That is, in the District Court, that probably would be an infringement action.

Hugo L. Black:

So that the so-called court does not render binding judgment and cannot as to the validity of a patent, can it?

Paul Bender:

Not on people who aren’t parties before it.

And in fact, it means that it’s not really binding.

In other words, the Court of Customs and Patent Appeals may say this patent is valid.

Now, that may bind the Commissioner and thus to issue the patent and the applicant of course is in balance in his favor, he gets the patent.

But then suppose he asserts that someone else who wasn’t a party to that decision in the Court of Customs and Patent Appeals, someone else has infringed the patent, that someone else can raise the invalidity of the patent because he was not a party in the Court of Customs and Patent Appeals.

It would be —

Hugo L. Black:

You never get a final, unless free on the validity of a patent until it goes to a District Court and comes up to us.

Paul Bender:

No, he wouldn’t get it as opposed — as concerns other parties, but realistically, Mr. Justice Black, it —

Hugo L. Black:

Realistically, the question is whether the patent is valid.

Paul Bender:

If this Court held the patent valid, it would be hard to imagine that any District Court would hold the patent invalid after that in an infringement —

Hugo L. Black:

But suppose — suppose that we would’ve taken a case where they held valid or invalid under the procedures then, and we reversed it, would that settle the controversy?

Paul Bender:

I think in a practical matter, it would.

Hugo L. Black:

But would it under the law where it is now written?

Paul Bender:

No, there’s no compulsive force upon a District Court in a later infringement suit.

That is the force of res judicata doesn’t compel it to hold the patent valid, but it wouldn’t make any sense to hold other than this Court had held it because this decision would be —

Hugo L. Black:

Well, it doesn’t make much sense to have a — have a review then of these orders of the patent Court of Customs and Appeals when it doesn’t settle in the —

Paul Bender:

Well, the same thing is true, Mr. Justice Black, of the other mode of direct review in the Patent Office to the Court of Appeals for the District of Columbia.

Paul Bender:

Its decision holding, upholding or reversing the decision to grant the patent has no more binding effect in an infringement action in the Court of Customs and Patent Appeals.

Those decisions have been reviewed by this Court since the — since the jurisdiction in the Court of Custom — in the Court of Appeals existed and the court has never had any difficulty with it.

If those are, and it seems clearly to be Congress had desired that they be, there’s no reason in the world not to have the Court of Customs and Patent Appeals.

And there also as I said before Mr. Justice Black, there is this policy reason concerning with the Patent Act which supports that, because if the Court of Customs and Patent Appeals adopts too liberal a view or the Court of Appeals and grants too many patents which shouldn’t be granted, those patents is kind of a clog on commerce.

And I think the reason for this Court’s jurisdiction is to permit it to remove those.

To remove the principles of —

Hugo L. Black:

But it can’t remove it, can it?

Paul Bender:

Yes you can remove it, surely.

If you hold as we want you to hold in this case that the patent should not be issued that’s the end of it.

Hugo L. Black:

In this particular case, I’m not —

Paul Bender:

Well, in any case where — where we ask —

Hugo L. Black:

What about in determining the validity of the patent?

Paul Bender:

Well, if your determination in this Court is that the patent is invalid, it won’t be issued, that’s the end of the case.

Hugo L. Black:

Yes, the patent wouldn’t be issued then.

Paul Bender:

Yes, so in that sense it’s far and the only sense of non-finality applies when the patent is issued.

As I try to say, that non-finality occurs because it’s not fair to buy a non-party, there’s no way you can get around with that.

Hugo L. Black:

What’s then the reason for the Government taking a different view through the years?

Has it?

I understood you said it had been.

Paul Bender:

Yes, it had.

I don’t know what was in the mind of the people who took the view.

I think the brief said that the reason was the Postum case had held that the jurisdiction to review on appeal the decisions of the Patent Office was not judicial.

And the briefs in opposition said that in view of the Court’s previous decision that the jurisdiction is not judicial, this Court has no jurisdiction.

Now, as I say that reason was removed, that reason was compelled by the Postum case.

That reason was removed in Glidden and Zdanok just three years ago when the Court held that there was no constitutional bar and in fact it was a judicial jurisdiction of the Court of Customs and Patent Appeals is exercising.

Since that time, we have not said to the court flatly, do not take this issue, except we have said to the court that the issue is a doubtful one and should be resolved in an appropriate case where it seems that there’s also an issue on the merits appropriate for resolution.

This case is the first one since that time where we believe that there is a substantial issue on the merits coming from the Court of Customs and Patent Appeals and therefore we ask the Court to resolve it in this case, since there are too many cases in the Court of Customs and Patent Appeals which raise broad issues of law which this Court ought to resolve.

Now, with the Court’s permission and I’d like to turn to the merits of the case.

That is the correctness of the decision of the Court of Customs and Patent Appeals that I processed to produce a useless substance is nevertheless a patentable process.

The factual context out of which the case arises is quite complex, but I think the relevant facts are fairly simple and I’ll try to state them as simply as possible.

Paul Bender:

The case involved an application for patent on a chemical process to produce a class of organic compounds with what I find to be an unpronounceable name.

The name is on page 3 of the record near the bottom in the — in the patent application.

As I understand it the class, the broad class of compounds known as dihydrotestosterones, they’re an organic compound.

I’ll call them “the compound”, if I may.

Respondent Manson is the patent applicant for the process to produce this class of compounds.

His affidavit on page 33 of the record shows that he’s employed by the Sterling-Winthrop Research Institute, which I assume is adjunct of the Sterling Drug Company, and that he’s occupied in doing this very thing, producing new organic compounds and processes to produce new organic compounds.

And in fact he says that he’s produced about 80 of them in the last five years.

These things are turned out with great abundance by chemical research companies.

Now, Manson applied for patent on his process, in January 1960.

Manson, however, was not the first person to apply for a patent on the process to produce on this particular process, the one involved in this case, to produce this compound.

In fact, in 1956, two other inventors whose names are Ringold and Rosenkranz, applied for patent on the same process and that patent was issued to them in 1959 even before Manson’s application was filed.

They got a patent on the very same process to produce the very same compounds which is involved in this case.

In doing so, they did allege some utility at that time for their process which is the same process and that can be found on page 57 of the record where their patent is set out.

William J. Brennan, Jr.:

I don’t follow this Mr. Bender.

Paul Bender:

Yes?

William J. Brennan, Jr.:

How’d this fellow get a patent if he’s already one?

Paul Bender:

Manson has not gotten a patent yet.

William J. Brennan, Jr.:

Oh!

Paul Bender:

But it is possible Mr. Justice Brennan to get a patent even though somebody else already has a patent on the very same invention.

This is called what’s known an interference proceeding in the patent law.

The fact that someone else already has the patent on the invention doesn’t necessarily preclude you if you can show that you invented it first.

William J. Brennan, Jr.:

Yes.

Paul Bender:

Now, there are some restrictions on that.

I think it’s 102 (b) which says that you got to come in within a year of the issuance of his patent.

If you don’t do that you may waive your rights.

But the overall or general principle of the patent law is that the first inventor gets the patent, and he gets it even if the second inventor managed to get a patent first.

Or for example in the co-pending situation that you just heard.

They might both be pending in the Patent Office at the same time.

In either case, the Act has a provision what’s called an interference proceeding and that’s what’s involved in this case.

Manson by applying for a patent after Ringold had gotten it was really invoking an interference proceeding and which he wanted it determined who invented the process first, and that’s never been determined yet.

Paul Bender:

This case has really decided on the pleadings.

The reason it’s never been determined yet is that the Patent Office said that Manson has not made sufficient allegations in his application and the affidavits accompanying it, the affidavits being filed according to the Patent Office procedure.

He hadn’t made sufficient allegations to entitle him to the patent over Ringold even if everything in his allegations were true.

And the reason they said that is that they said that Manson has not alleged in the affidavit he filed that the product of the process was useful.

Nor had he alleged that he knew it was useful or that it was useful before Ringold got — filed his application.

Now, it’s common ground that you don’t get a patentable invention unless it’s a useful invention, although there’s a serious dispute of what useful means.

They said, the Patent Office said to Manson, “You have not sufficiently alleged that your invention was useful before Ringold’s invention was useful, or at the time that you invented it, it was useful that you knew the use.”

Now, therefore they said, you have — you can’t show, since you haven’t alleged that you can’t show that you were the prior inventor of this invention accomplishes utility.

And therefore, they denied the application and the Board of Appeals affirmed.

Now, Manson had argued to them two things.

One, he said “Oh, I have alleged that the compound — the product is useful.”

They said, “That’s not true.”

They didn’t deem his affidavit as sufficient allegation.

Second, he said, “Even if my affidavit doesn’t sufficiently allege that the compound is useful, that’s not necessary.

All I have to allege is that the process produces a compound.

You don’t have to worry about what the compound is for or what it’s not for, so long as it’s not harmful, positively evil.

But you can assume that the compound just sits there and does nothing.

It’s just a substance which clutters up the world.

That doesn’t matter.”

He said.

The process to produce it is useful because processes are something special.

The process is so useful if they work, even though they work to produced something that isn’t useful.

Those were his twin arguments.

As I say, the Patent Office denied them.On appeal to the Court of Customs and Patent Appeals, they just addressed themselves to the second argument.

They didn’t go into to the question of whether he had a sufficiently alleged the use for the product.

They said, “You don’t have to.”

All you have to allege is what he undeniably did allege and that is that the process works to produce the product.

And they said, “If you do that, if you allege the process works to produce a product, then you’ve alleged enough to entitle you a patent if you can prove it.”

Now, this decision applies not only to interference cases, it applies to all patent applications.

And although that Manson came in forgetting about Ringold with exactly the same patent application just alleging that the process worked to produce Product X, but saying nothing about what Product X could be used for and not used for.

Paul Bender:

The Patent Office said, “Well you got to say what the use of the product is.”

This decision of the Court of Customs and Patent Appeals would hold that he didn’t have to say that.

That that’s enough that he could get a patent on any of these processes which he invents.

Has this been the position from the information is taken now?

Has that always been his position?

Paul Bender:

I understand it, it is generally always been the Commissioner’s position, yes.

And in fact Mr. Justice Harlan, it was the — it was the Court of Customs and Patent Appeals position in 1950 in the case called In re Bremner where the court said it was never intended that a patent be granted upon a product or a process producing a product unless such product be useful.

This was the Court of Customs and Patent Appeals in 1950, and as I understand that that reflect what the Commissioner then did.

I’m not absolutely sure of that, but that’s my understanding.

Since then, the Commissioner has adhered to that and if the Court of Customs and Patent Appeals which is slowly retreated from in it in a series of decisions which we set out in a long footnote in the brief until they finally reached the position they taken this case, and that is a process is something different from a product.

They say the Bremner case is right as to products.

A product, you can’t get a patent on a product unless the product was useful.

Well, they say that’s not true as to processes.

With processes, it’s enough to show that the process produces a product.

You don’t have to show that the product was useful.

Now, we — it’s clear that no one contested the fact that the Constitution requires in so many words, and the Patent Act has always required in the same route that a patentable invention be useful and we simply don’t believe that you can say with any reason or logic that a process is useful even though its sole use is to produce a product which is entirely useless.

That just doesn’t make sense.

And as I say, that was the view of the Court of Customs and Patent Appeals, clear in 1950 and until this case.

Take these large companies that are engaged in what is called pure research, experimental research spending vast amounts of money without knowing whether the results of the research is going to be commercially used or not.

Paul Bender:

Alright.

They don’t file an application, patent application, to the — at the experimental stage?

Paul Bender:

Well, they seem to in this case.

I thought they accept them all?

Paul Bender:

Well, they certainly don’t get them for the products Mr. Justice Harlan, there’s no question about that.

They don’t get them for the process, do you?

Paul Bender:

Well, this case would give them — to them for the process.

But hasn’t they been doing that before?

Paul Bender:

The Court of — the Patent Office would not give it to them for the process unless they show utility for the product, yes that’s the very issue that’s involved here, and that’s exactly what happened.

They produce enumerable products.

They can’t get the patent on the product if it’s useless.

Paul Bender:

What they’re now trying to do is to patent the process to produce the product and in that way foreclose access to the — to the product.

They then may never investigate the use of the process.

They just get the patent and use it for a negative reason.

Now, that is inconsistent with the purpose of the Patent Act, the constitutional purpose of the Patent Act, which is —

If they keep the process secret and not dispose it at all.

Paul Bender:

Then they don’t get a patent, Your Honor, but they’re perfectly entitled to keep it a secret.

Well, how does anybody knows about it?

Paul Bender:

Well, other people may arrive at it independently Mr. Justice Harlan.

This has in fact happened in this case.

That’s one — you see that’s one of the great dangers of patent.

If A comes in and gets a patent on something, he can foreclose B from using it even though B arrives at it independently one day later.

A patent unlike its copyright prevents somebody else from using it even though the second person doesn’t copy it.

It’s a total monopoly.

And so they can keep it secret, but that is no assurance that the world won’t learn about it because other people, as in fact happened in this case, may arrive at it.

In any — that by the way, Mr. Justice Harlan, seems to be the principal reason set forth by respondents for giving patents for these useless things.

They — they say, “Well it’s true that they’re useless” and they don’t say, they don’t make the argument too strong and if there’s a speculative usefulness which may eventually come about.

Well then you say that it’s the dissemination of information.

You’d give us a patent we’d tell everybody about this useless thing and then there’ll be other people will find use of it.

Well, the fact is that that’s not what patents are for.

Patents are to give a monopoly to people who will use the monopoly to benefit society.

The patent gives you a monopoly so that you can guard and market your product free from competition for 17 years.

If you didn’t have that, you might never market your product because you might not be able to get financing from people who wouldn’t invest in you.

If other people can steal the thing as soon as you hit the market with it, your investment may go down the drain.

They don’t have all the research expenses and the opening up of the market expenses which you have as soon as you hit the market they steal it from you.

It would clearly act as a suppression of new products being given to society.

There’s that that you suppose to use the patent for and the second thing you suppose — the second way in which you’d benefit the public is that at the end of the patent period, when the 17 years is up, the public gets something useful.

The patent isn’t given, as Mr. Doolittle said in the previous case, to reward an inventor as such, you do that lots of other ways.

You give him scholarships and grants and things like that.

The patent is to give the public the benefit of the invention, and it’s clear that if the beneficial used to the public that is what useful means.

That’s what this Court has always said in general terms ever since the Patent Act was enacted.

Byron R. White:

Mr. Bender, —

Paul Bender:

And —

Byron R. White:

— I suppose that you could be right and — and Manson could still win.

Paul Bender:

Absolutely.

Byron R. White:

Because, as a matter of fact, he did invent a useful product.

Paul Bender:

Yes, the question in this case was whether he knew of the use before Ringold knew of the use.

And he said —

Byron R. White:

But it wouldn’t make any difference whether he did or not, would it?

Paul Bender:

Oh, yes.

I think it would because it’s the time — time is very important.

Byron R. White:

Well, let’s assume that I invent something except that I don’t know what the use is and I don’t know any use for it.

And the next day, you invent the same thing independently and you do know a use for it.

Now, as a matter of fact, although I don’t know that I did invent a useful product.

Paul Bender:

Well, what’s that —

Byron R. White:

And why shouldn’t I — why shouldn’t I — and — and if we get into a fight in the Patent Office, why shouldn’t I win?

Paul Bender:

Oh no!

I think he should win, because he —

Byron R. White:

You mean — you mean — you mean the utility is part of invent — is part of invention?

Paul Bender:

Oh surely.

That — that’s precisely the issue involved here, utility (Voice Overlap)

Byron R. White:

Well it’s not, no it isn’t, the question — no the questions is whether something is useful — it has to be useful but I don’t have to invent it.

I mean I don’t have to invent the use or —

Paul Bender:

Let’s — let’s change our semantics a little bit.

Utility is part of patentability, there’s no question about that.

Byron R. White:

Alright, exactly.

Paul Bender:

That’s all I’d like to talk about.

Byron R. White:

It’s not part of invention.

Paul Bender:

Alright, but I’d like to talk about patentability.

You can’t get a patent without a use.

Byron R. White:

Alright.

Paul Bender:

That’s clear.

Suppose you invent a product, Mr. Justice White —

Byron R. White:

I agree with you, but the time — but in my example, by the time it gets around in the Patent Office there is a use for it.

Paul Bender:

Right, but — well, let me give you an example to which I think illustrates the problem in a case where there’s not too much controversy.

Suppose you invent a product, you know no use for it, if you apply for patent it would be denied.

Byron R. White:

Right.

Paul Bender:

Suppose someone else at the same time was applying for patent on the same product but he showed that it had a use, he would be entitled to the patent not —

Byron R. White:

Let’s just assume that I thought of the product the day before but not the use.

Paul Bender:

He would be entitled to the patent because he thought of the patentable invention before he used it.

You see, the patentable invention involves the use also.

Take it back one step and I think you’ll see it more clearly.

Suppose you think of the idea of producing — well you remember the Adams Battery case that you heard last — last month involving magnesium-cuprous chloride battery?

Suppose you thought of the idea of having magnesium-cuprous chloride battery on day one, right?

You tried it out on day two and it exploded, as the Skrivanoff battery which we cited as prior on as alleged to have done.

On day three, your opponent thought of the idea two days after you did.

When he tried it out on day four, he made some little change in the thing which made it not explode.

Now, he’s entitled to the patent, not you.

That’s clear, nobody would dispute that.

If you came in and ask for a patent on yours which exploded, you couldn’t get it even though you thought of the idea first.

And that it also seems to me is relevant on this other question which is probably —

Byron R. White:

Well, you changed the facts because I will agree with you.

Paul Bender:

Fine.

This is my facts that were involved in this case.

Byron R. White:

I doubt it.

Paul Bender:

If I — I’m really, Mr. Justice White, not aware of how I’ve changed the facts relevantly.

Byron R. White:

Well, you will have to find out.

Paul Bender:

Okay.

This, the example I just given, it seems to me, is illustrative of the principle point that I want to make and that’s the patents aren’t used and aren’t properly used.

It’s never have been used to encourage the dissemination of information, pure scientific ideas or techniques.

What they are used to was to encourage the dissemination of useful invention, because everyone concedes Mr. Justice White that that battery if it exploded when you tried to use it, wouldn’t be patentable even though he was the first one to think of the idea of combining magnesium-cuprous chloride.

Paul Bender:

And so he could come forward and say, as respondent say in this case, “Well give us a patent on the idea.

We put it together, other people may figure out how to do it without it exploding and then it will be a wonderful thing.”

But you don’t get a patent on that, everyone concedes that.

A machine that explodes —

Byron R. White:

Including names.

Paul Bender:

What?

Byron R. White:

Including names.

Paul Bender:

I wouldn’t say everyone otherwise.

You can’t get a patent on a machine that explodes.

You can’t get a patent on a battery that doesn’t work even though you’ve got a very noble idea which other people may seize upon and make into something useful.

In addition, you can’t get a patent on a product which has no use, even though if you got the patent you might say, the respondent say here, “Well we would publicize it and then other people might find the use for our product.”

There’s no question that you can’t get a patent on that basis of the dissemination of information.

The Court of Customs and Patent Appeals as I say held that squarely in 1950, it’s consistent with everything that’s ever been held and they explicitly in this case haven’t retreated from that.

They say it’s the product.

The argument is right.

You cannot get a patent on a useless product even though it’s a new product, and we say the same thing clearly ought to apply to useless processes.

There’s just no reason to make something different out of processes.

I would — finally, I’d like briefly to talk about the negative aspects of this which I’ve mentioned in response to Justice Stewart’s question before.

It’s not only that the patent system was never designed to give patents to encourage the development of useless things of ideas in the abstract.

It’s that also that if patents were given in cases like this, they would constitute a substantial deterrent to pure research which respondents say they’re trying to encourage.

If you let drug companies make lots of these products, invent lots of these processes without knowing any use for it and get patents, the only thing they’re going to do with those if they don’t find the use is to use them to block other people from arriving and using the similar process of product.

They’ll be used as a way of stopping their competitors from engaging in competition with them with these processes, because the in — the competitors may very well find a use.

If you give Manson — if you gave Manson, give a patent in this case on the process which was useless, Rosenkranz and Ringold who later find the use won’t be able to use their useful process when they know the use for it without the permission of the prior patentee.

He can use that patent to block off their attempts to give society something useful.

Potter Stewart:

It seems to me, Mr. Bender that this policy argument that you’re now making, and I understand that’s what it is, was implicitly answered in Mr. Justice Harlan’s question to you a moment ago, and that is if a process which does not produce a useful product is not patentable as you maintain, then all the incentive will be to — instead of applying for a patent to keep the whole process secret and that would inhibit I should think further research by others, competitive research by others to find out if the — if the end product is useful.

Paul Bender:

That’s a possibility, Mr. Justice Stewart.

We don’t dispute that.

You may speculate that it might inhibit.

Personally, it seems to me, I’m doubtful of that.

I doubt if people engaged in pure research are going to hide what they think is technically scientifically significant discoveries, because they can’t get patents for it.

Paul Bender:

And I shoul think (Voice Overlap)

Potter Stewart:

Companies research — companies do it all the time as you know —

Paul Bender:

Big companies market —

Potter Stewart:

— they have option.

They choose to keep the secret rather than to apply for a patent.

Paul Bender:

I agree.

Potter Stewart:

They’ve done every day and hundreds of times.

Paul Bender:

But on the other hand, there’s also the possibility that although they keep it secret, other people will arrive at it, and if you give them the patent on it, if other people then do independently arrive at it and arrive at it with the use, the first patentee, the one who has the patent can stop them from exploiting it to the public’s benefit.

Now, I agree there are arguments on both sides.

It seems to me that putting that light, the arguments clearly don’t favor giving a patent because there are all these arguments and all these reasons why the patent might act as a depressant upon scientific research.

The fact is, however, that you just shouldn’t make the distinction between process patents in this regards and product patents in this regard.

You could make the same arguments with regard to product patents.

They’re clearly not accepted, and I take it the reason that this balance has been struck there in favor of say, let them keep it secret.

Let other people find the product, and also Mr. Justice Stewart by not giving the patent at the time when they just find the product to the process, you encourage them to continue to look for a use, not to stop with a product but to go and find out what to do with it, because it’s only then that they can get the patent.

Now there, it seems to me, you’ve got an encouragement which will substantially help society by asking them to look for the use and by not giving them the patent and the monopoly until they do get the use.

In some, the patent system is designed to give society things that are useful to society and you don’t give patents unless you have some assurance at the time you give some reason to believe at the time you’re given.

That’s the thing you’re giving a patent on that will be useful to society, otherwise, you’re just floating a negative monopoly.

Something that the patent holder can use to stop other people but that he has no incentive particularly the use to — to give society something especially in an area like this where he may — his sole interest may be in stopping his competitors since he has a — since he has a related product.

Is this the decision we’re revealing on our — is this the only decision in appeal?

Paul Bender:

On this precise question, yes.

First time this has been decided?

Paul Bender:

In the Court of Customs and Patent Appeals.

The Court of Appeals for the District of Columbia has held the way we submit in a case called Petrocarbon against Watson several years ago.

Process patent.

Paul Bender:

Process patent, yes and they — and also the Bremner case, as I said previously in the Court of Customs and Patent Appeals held the same thing with regard to a process patent that you can’t get a patent on a process unless the product is useful.

That was held by the Court of Customs and Patent Appeals.

Is the rule presently in effect in the Court of Appeals for the District of Columbia Circuit, it is the Court of Customs and Patent Appeals which has now departed from.

So in that sense, I think there are decisions on this previous decision, two of them going precisely our way, the Bremner case and the case in the Court of Appeals which creates the conflict.

There’s no decision in this Court on the issue, but in the lower courts, there are these previous decisions.

But, whatever time I have remaining, I will use for rebuttal.

Can I ask you one other question?

It’s a matter isn’t it that a construction of statute this case could go either way, isn’t it?

Paul Bender:

It’s a verbal matter, if you just look at the word useful, I suppose you could.

Interpreting the statute.

Paul Bender:

You could verbally say that a process is useful if it produces a product but I think — when you interpret the Constitution, you can’t amount that way, Mr. Justice Harlan, because the Constitution talks about promoting the progress of useful arts.

When you get in that notion of the progress of useful art, there it seems to me that you can’t just look at the abstract question that the process is useful even though it’s useful to reach a product which is a dead end.

I don’t see why the Constitution should interpret it against you than the statute.

Paul Bender:

Well, because as I say I think it has in mind the notion of useful to society, beneficially useful.

And making the processes is useful.

Paul Bender:

Not if the end result of the process isn’t useful.

That’s what you say.

Paul Bender:

Right.

Earl Warren:

We’ll recess now.

Dean Laurence:

— questions and I trust the same situation will prevail this afternoon.

I should like to address myself firstly to the matter of the merits and to straighten out some of the situation with regard to just what we are arguing about here.

Firstly, it is clear that the subject matter which is defined by the claims of the patent application of Manson here on appeal is a process.

It’s not a product.

It’s very important to understand that it is only a process.

It is further important to understand that it is not the first process ever invented for making the compound, which we will call the two alpha compounds here that it is supposed to make.

This is on the record the second process invented for making that compound.

In other words —

William J. Brennan, Jr.:

It’s the only compound that makes this (Inaudible)

Dean Laurence:

It makes a class of compounds.

There is a specific claim to the making of one compound and there is a slightly broader claim to the making of a narrow class of compounds, Mr. Justice Brennan.

But for purposes —

William J. Brennan, Jr.:

Are all of them or whatever the claims are, I gather Bremner’s completion is through all the use.

Dean Laurence:

That is the position of the Government.

Earl Warren:

Is that conceded?

Dean Laurence:

No, Your Honor, that is not conceded.

Earl Warren:

I thought I understood Mr. Bender to say that there was no disagreement on who’s to — as to whether the product was useful or not.

Dean Laurence:

I think, he so stated, Mr. Chief Justice but we do not concede that.

We simply do not concede that the process is useless and we do not concede that the product which will be obtained if you conduct the process is useless.

And we further say that in this specific case, however, it wouldn’t make any difference if it was.

Hugo L. Black:

Was it accidentally discovered or did you set out to discover that particular kind.

Dean Laurence:

In answer to your question Mr. Justice Black, there was an article published in a journal, antecedent, anything that occurred here involving Manson or involving the Ringold patent which we’re trying to get into interference with.

Before, either Ringold patent it — filed their patent application or Manson filed his.

In other words, there was a journal article back in 1956 which showed a way of making the two alpha compound and which described the compound by identifying characteristics, melting point and so on, gave a structural formula whereby it could be identified and said that that compound was of a class of compounds which were being tested as tumor inhibitors and some members of the class had already been tested and found to be useful for that purpose.

That’s at record 61.

The Court will refer to record 61.

Hugo L. Black:

You mean the article showed that it would have a use?

Dean Laurence:

Yes, that is why we say —

Hugo L. Black:

What field?

I’ve heard so much that may not have anything to do with the legal point, but I’ve got an interest on it.

Dean Laurence:

It very definitely has something to do with the legal point, Mr. Justice Black.

If I may read from page 61, the last sentence of the Ringold, et al. article is this.

After having described, the very compound produced by the process here in issue, but by a different process, the article says, “While anti-tumor screening of the above described 2-methyl hormones is still in progress, 1A and 2A which are other members of this class of hormones to which the 2-methyl hormones belong have already been shown to be very effective tumor inhibitors.

Now, that is the starting point, the takeoff in this case.

There was a journal article, and in that journal article, it told us a way of making the compound which the process here in issue makes.

So we have an alternative and second way of making the compounds described in that journal article.

Now, after the journal article was published, Ringold filed a patent application and got a patent, and they claimed a different process from that of the journal article involving only one-step method.

The first, the journal article shows about I think a three or four-step method.

After Ringold got his patent, Manson filed an application, timely, there’s been no argument about that and in full compliance with all of the rules of practice and the statutes relating to the proper filing of an application, copied a claim, two claims out of the Ringold patent, the process claims which are here in issue.

And said, “I think I invented that process, that single step process not the process of the article but the single step process before Ringold, the patentee, invented it and I want a chance to contest priority.”

And when that occurs, the Patent Office rules provide Rule 204 (b) as it then stood provided that one must file an affidavit which makes a prima facie case of having invented the subject matter.

That is when you copy a claim out of a patent application, out of an issued patent, you must file this kind of affidavit that shows on its face that you completed the invention of the subject matter defined by the claim before the filing date of the patentee.

Otherwise, if you couldn’t make such an affidavit it would be nonsense to have any interference because you couldn’t back of his filing date.

Manson here filed such affidavits, and that is all what this case is about.

Whether the affidavits he filed were sufficient under Patent Office Rule 204 (b).

And now I have to tell the Court that Rule 204 (b) was amended after this case was decided to bring it into conformity with the point that we are going to make in this case that the affidavits could not be judged, their sufficiency could not be adjudged by a primary examiner.

By what?

Dean Laurence:

A primary examiner.

And at this point, let me very quickly describe, because I think Mr. Justice White asked a question whether Board of Appeals was under control of the Commissioner.

Let’s look at the Patent Office for a moment.

We have — when an application is filed, a group of people called examiners and there is of course in the hierarchy a primary examiner.

Now, the primary examiner and all of his helpers are arms of the Commissioner.

The Commissioner is charged with examining the patent.

So as far as we are concerned here, a primary examiner is the Commissioner.

Now, if the examiner by the Commissioner says, “I won’t allow that patent for any reason at all because it’s not in compliance with the Section 112 which says you must fully describe how to make and how to use the claimed invention.”

Or any other reason, then the applicant has recourse to a Board of Appeals.

Now the Board of Appeals is not under the control of the Commissioner.

The Board of Appeals is a separate body.

The members of the board are nominated by the president confirmed of the vice senator of Senate and they sit as a board.

The Commissioner of Patents is a member of the Board of Appeals but he does not control the Board of Appeals and cannot reverse a decision of the Board of Appeals.

Insofar as I’m aware, it’s never been done.

I do not believe it can be done.

Tom C. Clark:

How large the Board is it?

Dean Laurence:

There are I think currently nine members, a sit in banks of three and from time to time other people are appointed when they get a heavy case load to the statutes provide that they may be, but it’s a —

Tom C. Clark:

What’s the approximate number on the staff of the Patent Office, the whole office?

Dean Laurence:

The whole staff is I think on the order, examining core, is on the order of 1100.

There is of course a big administrating clerical staff.

I do not know the number of those people.

Tom C. Clark:

Do you have any idea how many patents come out of there a month?

Dean Laurence:

A month?

Currently the load is about 800 to 1200.

It varies in that range.

The reason for it is of course the fee bill, has made everybody pay up their fees to get their patens out.

Normally, I think the number of patents issued for a week in the whole category of arts is something like 700.

Tom C. Clark:

A week?

Dean Laurence:

Yes, Your Honor.

Tom C. Clark:

700?

Dean Laurence:

Yes.

Tom C. Clark:

You’ve been asked a little higher.

Dean Laurence:

It’s a little higher because we have a surge in the office right now due to the — there was — you had to pay your fees before a certain time in order to avoid a higher fee.

Tom C. Clark:

Well, how many applications?

Dean Laurence:

About two-and-one-half times, that number of applications are filed.

It takes roughly two and one half applications to get a patent.

In other words, a patent always knocks down about one-and-a-half and they led through about one.

Tom C. Clark:

(Inaudible)

Dean Laurence:

Yes.

Hugo L. Black:

(Inaudible)

Dean Laurence:

I think is about correct, Your Honor, those statistics are available in Senate reports.

Now, the primary examiner decided the affidavits were insufficient, and that’s all we’re talking about on the merits in this case is whether those little old Rule 204 (b) affidavits were sufficient.

The primary examiner decided the affidavits were insufficient only because, and I quote record 48 and 50, “No utility for the final product produced by the process is alleged in the affidavits.”

Now, I want to make it very clear right at this point, this is not a Section 112 case.

Section 112 has to do with what you put in your patent application when you file it.

This case has only to do with a Rule 204 (b) affidavit, and when the examiner said at that point, “No utility for the final product produced by the process is alleged,” he meant alleged in the affidavits.

There didn’t have to be a utility of any sort alleged in the patent specification, and there wasn’t and the examiner specifically ruled on that point saying that that had nothing to do with it.

Manson argued the prime — yes?

William J. Brennan, Jr.:

What you’re telling us I gather is that this problem of the patent in the form of his affidavit that is used as a part of it only because you took two claims out of the —

Dean Laurence:

Issued Ringold patent.

William J. Brennan, Jr.:

— issued Ringold patent.

Dean Laurence:

Yes.

William J. Brennan, Jr.:

That what triggered this particular pursuit?

Dean Laurence:

That is correct Your Honor.

Keep in mind that the process here involved is already patented.

We aren’t up here asking that this Court determine whether the subject matter is patentable.

That isn’t an issue here at all.

It’s already been patented to Ringold.

What Manson sought and what the CCPA granted him was the right to contest priority to see who first invented the patented process.

In other words, can Manson take it away from Ringold, et al.

Tom C. Clark:

Ringold did not have to make an affidavit when he filed his patent.

Dean Laurence:

That is correct, Mr. Justice Clark, simply because he’s not involved until the Patent Office says there is an interference.

Byron R. White:

But to get a — but to get a patent, Ringold had to show use or no?

Dean Laurence:

Ringold, in filing his application did not have to show use because the compound was already known, but he did in fact show a use for the product made by the process which is patented.

Byron R. White:

I see.

Hugo L. Black:

When the hearing examiner has said that allegation was not contained, did — was there an amendment made to the — for the affidavit or effort made to do it or did they — your client agreed to do it or declined to do it?

Dean Laurence:

Mr. Justice Black, there are five affidavits in this case and the last one is at record 47.

In that specific affidavit, what was said was this.

That prior, I’m reading from the bottom of record 47.

Prior to December 16, 1957, that’s the filing date of Ringold, the utility of the process of claim three of my application was obvious to me — that’s a claimed copy out of the patent — was obvious to me and that it would produce, what I call a two alpha compound here, the utility of which as a hormone analogue was described in the article by Ringold which is the early journal article.

Now, in other words, what the applicant here said —

Hugo L. Black:

That’s the one that says was for to be used as a tumor inhibitor?

Dean Laurence:

The article said that.

Hugo L. Black:

Yes.

Dean Laurence:

Yes.

Hugo L. Black:

Is that the part to which it referred?

Dean Laurence:

Yes.

The utility of which is a hormone analogue that is as a tumor inhibitor.

Now, we say that when Manson averred that the process of the claim was obvious that it would produce what it was supposed to, the two alpha compound, and then that the utility of that thing which was produced, but is not here claimed was obvious to him, he made a prima facie case and that’s all that’s required by the rule under viable precedents which have not been overruled.

And which are found at record 45 — at page 45 of respondent’s brief which hold that an invention may be completed and the thing which is made — made its utility may be so obvious that no test is necessary.

Now, there is a class of cases in which the courts are or several of the lower courts has so held that you can complete an invention.

And mind you, Rule 204 (b) is designed to inquire into whether an applicant completed his invention, i.e. conceived and reduced to practice prior to the filing date of the patentee from whom he seeks to take claims.

So here, we say that under the viable precedence of the cases which we cite at page 45 of our brief, Manson did in fact make out a prima facie case because all he had to say was that the utility of this process was obvious to him and that it would make a known product.

Hugo L. Black:

But is it your position that that’s enough?

Dean Laurence:

It is our position that that would be —

Hugo L. Black:

I quite have — yes, suppose — are you saying that it’s not necessary to show or for an action to exist any utility at all in the product of a process to which patent is designed?

Does your case depend on that point that far?

Dean Laurence:

Our case does not depend on this Court going that far, but we say if the Court should decide to go that far, then a claim directed to a chemical process which is shown to be operative and a full disclosure given of how to make a particular product and that product is known in the art, it’s all in the art per se, it makes no difference whether any utility be known for it or not, that the utility of the process is proven and established when the process is conducted by the chemist and shown to produce the thing it is supposed to produce —

Hugo L. Black:

A product, as I understand you’re saying, shown to be able to produce a product which is no known —

Dean Laurence:

Known.

Hugo L. Black:

— possible utility that anybody can think about?

Dean Laurence:

That is correct, Your Honor.

But the product must be known in the art.

The product per se must be known.

Hugo L. Black:

What?

It might be known like some object that everybody hopes that it would be few all in the world?

Dean Laurence:

That is entirely possible, but the cold fact —

Hugo L. Black:

It doesn’t make any difference, does it?

Dean Laurence:

The cold —

Hugo L. Black:

They can get a patent even though it has no possible utility and might actually injurious to the public?

Dean Laurence:

We couldn’t get a patent on the product, Your Honor.

Hugo L. Black:

Well I’m talking about the process of producing this product that nobody wants and as a matter of fact everybody’s afraid of, dangerous — dangerous to be produced.

Dean Laurence:

Dangerous to produce?

Hugo L. Black:

Dangerous for it to exist.

Let’s imagine one that is dangerous to exist.

Dean Laurence:

In that case Your Honor I think it would be quite contrary to what Mr. Justice Story said in Bedford v. Hunt, it would be there contrary to good morals mischievous or wholly undesirable then I agree with Mr. Justice Black that there could be no question in such a process.

Hugo L. Black:

You’re not agreeing but I’m just asking if that was the —

Dean Laurence:

Oh, I wouldn’t — I would say no.

If you have something which was something to good morals, Mr. Justice Story I think would —

Hugo L. Black:

It wouldn’t have to get into good morals any further.

Dean Laurence:

No, I wouldn’t necessarily have to get into that but as Mr. Justice Story did —

Hugo L. Black:

Subject to one of controversy.

Dean Laurence:

He said, “Injurious to the morals, the health of the good order of society.”

If it’s any of those, then it is not patentable, otherwise it is not necessary to establish the invention is of such general utility as to supersede other inventions now in practice to accomplish the same purpose.

It is —

Hugo L. Black:

Well, that’s general utility, wasn’t it?

Dean Laurence:

Right.

And the justice went on to say, it is sufficient that it has no obnoxious or mischievous tendency that makes it sufficient.

Hugo L. Black:

That’s a line you would draw.

Dean Laurence:

That’s a line I would draw, Your Honor, and here is why.

Dean Laurence:

As a matter of fact, no one can name a chemical compound.

We’re not dealing with sort of amorphous masses here.

We’re dealing with chemical compounds which are things which have definite fixed structures known to chemist.

No one can name a chemical compound which is not useful because any chemical compound can be used by a chemist by obvious reactions to make something else.

It is useful per se, any organic chemical compound.

There are type reactions known in organic chemistry.

If the thing is an alcohol it is known that it can be esterified with an acid to make an ester so you can make an ester from it, it is a research tool.

Every org —

Hugo L. Black:

What you’re saying now is set on the premise that it is useful, any of them, any one is useful.

Now, that’s — that’s a different proposition, isn’t it?

Dean Laurence:

We are here dealing with a process which makes an organic compound and I have asserted that any organic compound is useful because something else can be made from it.

Hugo L. Black:

Well, of course, if that’s the case and that has been shown, I appear to decide that that’s wrong then.

That would be a question of fact, wouldn’t it?

Dean Laurence:

In a specific case, yes.

Hugo L. Black:

Yes, in your case.

Dean Laurence:

In our case, we are not dependent upon that, because here, our compound, I should not use the expression, our compound.

The compound produced by the process was known to be of a class of compounds where a utility was set forth in a prior publication.

William J. Brennan, Jr.:

Well, in addition to that, to get this, Mr. Laurance, Ringold got a patent on a process to produce this very compound, wasn’t it?

Dean Laurence:

Correct, Mr. Justice Brennan.

William J. Brennan, Jr.:

How can we get this to test the utility for that compound?

Dean Laurence:

Well, he asserted the utility in his specification and that’s all its necessary.

William J. Brennan, Jr.:

And what you’re trying to do, picking out to a complaint and say no, whatever he’s got belongs to me and that includes any drug that he gets out of those assertions that that compound has utility.

Dean Laurence:

I’m saying his process belongs to Manson, because Manson, we think, was earlier and we want a chance to prove that.

William J. Brennan, Jr.:

And you want the benefit of this whole patent in proving whatever flows on the assertion in this claim that the compounds have a utility.

Dean Laurence:

There is no assertion in the claims that the compound had a utility.

The claims themselves define merely a process.

There is an assertion in the specification.

William J. Brennan, Jr.:

Well, whatever that is —

Dean Laurence:

That —

William J. Brennan, Jr.:

(Inaudible)

Dean Laurence:

That is not quite accurate, Mr. Justice Brennan.

I do not want to leave you with —

William J. Brennan, Jr.:

— the statement about everyone?

Dean Laurence:

I do not want to leave you with a misapprehension.

We do not seek to obtain the benefit of any use disclosed in the Ringold, et al. patent.

We do seek to get the benefit for Manson of the use disclosed — the utility disclosed in the prior journal article which was ahead of the filing date of the Ringold patent.

We think we’re entitled to that.

That was in the entire art.

William J. Brennan, Jr.:

— application claimed anymore?

Dean Laurence:

Anymore?

William J. Brennan, Jr.:

In the way of utility?

Dean Laurence:

The specifications defined other utilities perhaps more specific.

We’re dealing in the field of hormonal, which means that affects the endocrine glands, and there they can be androgenic or estrogenic and the specification of the Ringold, et al. patent did go farther than.

William J. Brennan, Jr.:

And those you do not claim.

Dean Laurence:

We do not claim.

The claims here are concerned in no way with a product or with any particular use of a product.

William J. Brennan, Jr.:

(Voice Overlap) on this issue of utility of product, not of process, did what Ringold included in his specification the utility of product, is that why he got the patent?

Dean Laurence:

No, Your Honor.

He got the patent because the process sufficiently creatively ingenious, vis-à-vis, the prior art the examiner thought it was patentable subject matter.

Hugo L. Black:

And also there was a statement there that it’s useful, isn’t it?

Dean Laurence:

That the product was useful.

Hugo L. Black:

The product, yes.

Dean Laurence:

Yes, but he did not claim the product.

Hugo L. Black:

Well, I asked you these questions because I’m a little confused, it seems to me you are, maybe I’m wrong about it.

That you’re undertaking a little more than you need to undertake because of the arguments you’re making to us, because you are saying as I understand it abstractly that it doesn’t make any difference whether this ever had a utility or not.

You didn’t have to allege it nor not to prove it and yet you say, your main argument has been devoted for the fact, supported to some extent by the record, I’d say, that this really did show that it was a useful argument.

Dean Laurence:

I have gone beyond the facts necessary to decide this case in arguing of the point because it was my understanding the Court raised the question of how I would feel, or how I would argue in the event that.

And so I went beyond what is necessary to decide this case.

We feel that all it’s necessary to decide this case on the merits question would be just this.

If the Court would look at the affidavit and observe that it avers the process had in fact been conducted and the compound made, and that’s uncontroverted.

Dean Laurence:

And then, that the utility of the product was obvious to Manson and that under applicable case precedence which are still viable, that makes out a prima facie case for priority that would indicate —

Hugo L. Black:

But didn’t you leave that one thing though?

Didn’t you also point to the fact that in this affidavit they referred to a document which had shown the utility of the — for the product?

Dean Laurence:

We could fall back upon that, Your Honor.

If we had to fall back beyond what I have said, we could go on and say yes.

In the journal article, there was a utility showing for the compound.

Abe Fortas:

It seems to me that it has been as simple as that, Mr. Manson in his affidavit would’ve said, “Why, this is good as an impact tumor business” or whatever it is.

Now, what’s happened is, I have read the record, is that the examiner and the Board said that you just hadn’t made that sort of a statement.

You just had not claimed that this process has any utility in terms of being able to produce a product or in terms of being an intermediate stage in the production of the compound which would be useful.

Now, that’s a simple matter that the language, why didn’t you amend the affidavit.

Frankly, I can’t read the — I want you to help me on this.

I can’t read this record without the feeling that perhaps there’s a little more to it than that.

Why didn’t he use the same language that was used in the article, in the journal article?

Dean Laurence:

We — Mr. Justice Fortas, we submit he did.

At record 47, the last allegation at the bottom of the page beginning from line four from the bottom of record 47, where Manson averred that prior to this filing date of Ringold, the utility of the process of claim three, that’s the copied claim, was obvious to me and that it would produce the two alpha compounds.

And then it goes on.

The utility of which compound as a hormone analogue was described in the Ringold article, and I say that that is not the same Ringold patentee, that’s the journal article I’ve been mentioning, and that was obvious to me.

And he had previously said, if you’ll refer to record 46, about the middle of the page just above the type signature of Andrew John Manson, Ringold — I’m sorry, Manson averred that prior to that same date, December 16, ’57, “I had read the article by Ringold.”

So that he was in possession of the knowledge of the — of the journal article and he had made the necessary averment.

Abe Fortas:

But that isn’t the point which I’m trying to get your help.

After he filed that, you had a great to do about what — if your statement just made is correct, it turns out to be nothing more than semantics.

And it’s hard for it to me to believe that if this is just a quarrel about the choice of words that the affidavit could not and would not have been corrected.

Now, both the examiner and the reviewing board, as I read it, say that the statement made by Mr. Manson is not synonymous with claiming any specific utility.

And that was reiterated by the Board of Appeals.

And as I read it, I must say in light of this, it seemed to me that Mr. Manson’s affidavit rather carefully avoided making any claim of specific utility rather than what he was saying was that if the process described in the journal article was useful, and I believe — I believe mine is going to be useful to, which it seems for me could reasonably be said to fall short of a claim of utility.

That’s the way I read what he said in light of the subsequent statements of the examiner.

Dean Laurence:

Mr. Justice Fortas, let me see if I can clarify it.

Firstly, the Manson article described the process not here in issue.

It described a product which is the same as that made by the process here in issue.

That product was a member of a class of compounds which the journal article described as having certain utilities.

Dean Laurence:

What Manson was required to aver in his affidavit was that the process which he had invented and copied the claims from the Ringold patent had a utility.

The process with what he was claiming and he had to make his affidavit with respect to the subject matter which he claimed it was of the statutory class of subject matter known as processes.

It was not the composition of the matter or the article, no.

When he made his affidavit, he had to make an averment, “I aver that the utility of what I invented, the process is useful.”

And that is why he said, “My process was useful because it would make the desired product.”

Now —

Abe Fortas:

No, but he didn’t — he is said that he didn’t make a product like the product described in the journal article.

Dean Laurence:

The product.

Abe Fortas:

But he didn’t say — but he didn’t say that it was a — would result in a useful product.

Now, apart from that, I might directly read this record as indicating that both the examiner and the board of review or whatever it’s called, held that he — his affidavit did not aver that the process did not adequately aver, sufficiently aver that the process is useful.

Is that what they held?

Dean Laurence:

I think so, Your Honor.

Abe Fortas:

— page 53, last line in the first full paragraph.

Hugo L. Black:

I’d like to add to that, because I can’t understand why this case should come all the way up here if you had believed that this was a useful product, you would’ve had amended your pleadings so to call it, whatever they were called, affidavit here.

Why was that not done?

Dean Laurence:

There were five affidavits filed and I think that represented a conscious effort on the part of the patent agent who prosecuted the application to comply.

And you say why this case came all the way up here (Voice Overlap)

Hugo L. Black:

I don’t see why.

Dean Laurence:

We didn’t bring it here.

Hugo L. Black:

(Voice Overlap) if it gets down to us now.

You say it is useful, they said you didn’t allege it was useful in the language that was clear enough to make it and bring it up into issue.

That’s what they held on the pleading and instead of amending it so as to show that it’s useful, as I can well see that it might be useful, it just stopped it and wouldn’t allege it.

William O. Douglas:

I suppose your answer is that it’s a process claim not a product claim.

Dean Laurence:

That is the simple answer that we give.

There is a further answer procedurally.

Hugo L. Black:

Well, how can there be a useful process claim if it produced something if nobody want it, nobody need it, nobody buy it wouldn’t advance the cause of science, or arts or business.

Dean Laurence:

The thought that the product is something no one wanted is quite contrary to the record, I submit, Mr. Justice Black.

Hugo L. Black:

Well that gets me back to why you didn’t quite want to plead it.

Dean Laurence:

It seems to us that it was pleaded but procedurally, let me explain how this occurs.

The examiner, acting for the Commissioner, looks over a patent application and after he rejects the application the record is completed.

Dean Laurence:

Now, in case that as finally rejects it, now in case that the applicant wants to — he can try to put in some more affidavits at that point and that was done here, then it goes to the Board of Appeals.

Now, once the Board of Appeals has made its decision which is the portion from which Mr. Justice Fortas was reading, there can be no further change made in the record.

It goes at that point to the courts — to the CCPA on the record as is made.

There can — after you hear what the Board of Appeals had to say and after it doesn’t have the chance to go back and fix up his record in order to accord.

William J. Brennan, Jr.:

For example, Mr. Laurence, I notice that article pointed us out to this earlier that I gather one of these compounds has already been shown to be very effective tumor inhibitors.

Now, you didn’t say that in the affidavit.

I gather because all you had to do — your theory was all you had to show was that it did have a use.

You didn’t know whether it actually was a tumor inhibitor but you could rely on the fact this article had indicated that it was?

Dean Laurence:

We think so.

William J. Brennan, Jr.:

And what — so that that’s as far as this is probably at page 47 was intended to take you, was it?

Dean Laurence:

Correct, Mr. Justice.

William J. Brennan, Jr.:

Someone else has said that it was a tumor inhibitor and for your purpose, your theory was that was enough, is that it?

Dean Laurence:

Correct, Your Honor and were at (Voice Overlap)

Byron R. White:

And your client Manson couldn’t cite an affidavit as — as to that use because he really didn’t know that was true, did he?

Dean Laurence:

He had not — we concede that he had not made any test of the compound as —

Byron R. White:

So he couldn’t make an affidavit to that effect.

Dean Laurence:

He could not do more than say —

Byron R. White:

But he could say, “I read the article which says so and so.”

Dean Laurence:

That is correct, Mr. Justice White.

Hugo L. Black:

Could he have made one on information and belief?

Dean Laurence:

That, we submit, is what he did when he said that since the article has been published and reflects this, we think that the use of the compound would be obvious in view of what’s in the publication.

It was obvious to us that it would have that result.

William O. Douglas:

Well, I understand your argument if I come up with a patent that the process is a sudden mysterious way so as to isolate a new either two unknown element, let’s say the atom, and that is useful because it does isolate it, and because the isolation is a new end result even though the — there’s no present use or prospective use for the particular element that has been isolated.

That’s your argument as I understand it.

Dean Laurence:

That is my argument in its broadest sense Mr. Justice Douglas, and I would put it this way.

You recall that in Corona v. Dovan, this Court said, “The criterion as to processes and their reduction to practice, which means completion of the invention.

A process is reduced to practice when it is successfully performed.”

It doesn’t say anything about having to go on and determine some utility for what’s made, and coming now to this specific point made by you Mr. Justice Douglas.

The court below said clearly, a process which operates as disclosed to produce a known product is useful within the meaning of the statute.

Now, how can it be said the contribution to the store of chemical knowledge of a second process, as we have here, second process in the art for making a known compound does not add to our useful knowledge and contribute to the progress of science and useful arts.

Dean Laurence:

How can it be said that it doesn’t?

It adds something to our knowledge of chemical processing which is very desirable.

Abe Fortas:

Yes, but as I read the Board’s statement, they say that your process may be such, you say it’s a different process, it’s a new process.

They say your process may be such so that it does not in fact produce the same identical compound, for example, and it’s referred to in this article.

And it’s your burden, according to what the Board says, to show that your process will not produce something that has some utility and that’s a position that they have taken and it’s a position from what you’re appealing here, as I understand it or what you’re attacking here.

Dean Laurence:

Mr. Justice Fortas, I think I still have not made it clear that the process of the article and the process of the claims here involved are two different processes for making the same identical thing, and there’s no question about that.

Abe Fortas:

Well, perhaps I misread the Board’s statement, but as I read the statement, there is a suggestion that they may have a different effect.

At the bottom of page 52, the fourth paragraph at the bottom of page 52.

And their conclusion is that it’s our view that statutory affirming of usefulness of the product cannot be presumed really because it happens to be closely related to another compound which is known to be useful.

Dean Laurence:

Yes, I think that arises in this context.

The process of the claims here in issue makes a compound disposed as being made by another process in the journal article and that is not disputed.

What is raising the question, I believe is this.

That the compounds which were tested and reported upon in the journal article are what we call homologues, next to adjacent homologues of the compound made by the process here in issue.

The — and those compounds were reported as being effective tumor inhibitors in certain screening tests, and the compound of the exact process here in issue was in the progress of being tested at that time.

So that we had a classic compound some members of which had been tested and some had not.

Abe Fortas:

Well, what you’re saying now is that you aren’t in any position to make a claim of utility for this precise process, if I’m mistaken.

Dean Laurence:

If it be said that it’s necessary to make a claim for the utility of the product made by the process.

We were in a position to make a claim for the utility of the process and that it would produce a desired product.

Abe Fortas:

Product, though, yes.

Hugo L. Black:

A desired process but not a desire to make it.

Dean Laurence:

The fact that money was being spent on the process indicates that there were some desirability both in the process and what it would make.

Hugo L. Black:

Is this — has this been in a dispute so that somebody’s wanted to get decided the abstract question whether or not you can get a patent on a process which produces a thoroughly useless product?

Dean Laurence:

I’m not aware that it has, Mr. Justice Black.

Hugo L. Black:

What’s that?

Dean Laurence:

I’m not aware that that abstract question is presented.

Hugo L. Black:

This is not a test case to decide — to get that question decided.

Dean Laurence:

It certainly is not.

We have no desire to be in this Court on this case.

Well, you’re not claiming, are you, that the Government’s position here, is not probably before us?

Dean Laurence:

That takes us to the jurisdictional question.

No, I’m not talking about the jurisdictional question.

You are saying that the question which the Government tenders here really isn’t presented by this record?

Dean Laurence:

That is our position, Mr. Justice Harlan.

We think that the question presented by the Government is not properly brought on the record before this Court.

But you got a flat holding by the Court of Customs the Patent Appeals, you don’t have to allege what the Government — you don’t have to show what the Government says that must be showed namely that the new process results in a useful end product.

Now, that’s the Court of Customs Appeals certainly held that, is that right?

Dean Laurence:

The court — if I understand you correctly, you’re saying the court below held that a process which operates to produce a known product is useful.

And that is what the court below did hold in fact.

Well then, why is it a question that the Government raises here?

Dean Laurence:

Because the Government record — the Government says even though the product is known and known to be a member of a class of compounds having an established utility, still that doesn’t make any difference.

Hugo L. Black:

I don’t understand them to present that question in the question presented.

Dean Laurence:

No, in the question presented —

Hugo L. Black:

What you’re saying is that the Government states the question wrong.

Dean Laurence:

Correct, the Government fails to state the question.

Hugo L. Black:

That’s not (Voice Overlap).

Dean Laurence:

The question as stated by the Government, we submit, is not before you because they have omitted the word known before product on page 2 of their brief in stating their question.

And in any event, if the utility can be alleged under a Rule 204 (b) affidavit to be obvious, that makes out a prima facie case.

William J. Brennan, Jr.:

But Mr. Laurence, am I wrong about this?

The examiner said your affidavits were inadequate and the review board, whatever this thing, agreed, true?

Dean Laurence:

Correct.

William J. Brennan, Jr.:

Now, the Court of Customs and Patent Appeals did not find in your favor on the basis that they found your affidavit adequate, did it?

Dean Laurence:

Yes, Your Honor.

William J. Brennan, Jr.:

It did?

Dean Laurence:

Yes.

William J. Brennan, Jr.:

I mean but adequate only on the premise that it was unnecessary to have any allegation of utility.

I meant really I should’ve put the question — they didn’t find they were adequate on the premise that indeed you had alleged a utility for the product, did they?

Dean Laurence:

The court held that it was only necessary to allege in the affidavit that he utility was obvious to the applicant and that we have so done and that made our affidavit sufficient then the court went beyond that and —

William J. Brennan, Jr.:

Where is that?

Would you show me that?

Dean Laurence:

Yes, in —

William J. Brennan, Jr.:

In the Court of Appeals’ opinion?

Dean Laurence:

Yes, when they discussed In re Dickinson and Zenith which was a predecessor case.

William J. Brennan, Jr.:

Yes.

Dean Laurence:

Record page 65 and the Court will find it necessary to refer to Dickinson and Zenith in reviewing on this point.

In the Dickinson and Zenith case which they quote from at length here, the Board said — sorry the Court said that the question of the operability and the statement that such utility was obvious.

I’m reading now from the bottom of page 66.

It is our opinion that if the requirement of a prima facie showing of utility of a claimed compound, and that was in the Dickinson and Zenith case, by the way there was a compound involved, may be satisfied by the statement that such utility was obvious at the time the invention was made than a fortiori the requirement, half of page 67, is satisfied where no question is raised as to the operability of the claimed chemical process to produce a known compound.

So there, they decided this question which we think is the only question in this case, the completeness of the rule —

William J. Brennan, Jr.:

I see, is that what you’re suggesting now Mr. Laurence is that they said on the premise that there has to be an allegation of utility of the compound that is the product of the process.

On that premise, you’re saying the Court of Customs of Patent Appeals said you satisfied that requirement?

Dean Laurence:

Yes, Mr. Justice Brennan.

William J. Brennan, Jr.:

And then everything else is what, just dictum?

Dean Laurence:

It’s — it would be dictum.

The statement to the effect that it clearly a process which operates to produce a known product is useful without going any further would be dictum.

Tom C. Clark:

You’re right on the first half of the page.

(Inaudible) utility of the compound.

Dean Laurence:

That was the statement of the issue by the court below.

I have only a few moments and I do want to touch on the jurisdictional question.

I regret that I’ve gotten to that before.

We say — we do agree with the petitioner that this Court now has clearly the jurisdiction to review cases coming on from the lower court where they originated in the Patent Office Board of Appeals, but we say that that is true only when the appellant losses below and not when the Commissioner is reversed below.

And I will try to boil this down into five minutes.

We have to go back to 1839 and remember that from that time on, there have been alternative routes provided for review of an adverse decision by the Commissioner of Patents on a patent application.

The alternative routes have taken various forms.

They’ve gone through Chief Justice of the old District Court of the United States for the District of Columbia from 1839 to 1852.

They went through the old Supreme Court of the District of Columbia and there was a court called the Court of Appeals for the District of Columbia for a while.

And all of this time, there was the one alternative route which went up and was cumulative between 1839 and 1927 in this respect, and a defeated applicant could elect to go one way.

And when he got beaten up there, he could come back and have his bill in equity remedy all the way through and take the normal course of a bill in equity.

However, between those years of 1836 to 1948, the Commissioner never had any right by statute to go any further if the applicant/appellant, was successful in his alternative route.

Now, when it comes down to a matter of statutory construction and when Congress puts in a statute saying that there shall be, as it did in 1948, a petition for certiorari, then we have to look.

I should’ve added something else.

Dean Laurence:

In 1927, the routes were no longer alternative and cumulative.

They were split.

And the applicant had to elect which way he’d go, and if he elected the so-called alternative route as opposed to bill in equity route that was the end of the road for him.

If he got locked there, he couldn’t come back and have his bill in equity.

Now, when we look at a statute to determine the purpose of 1256 which is the certiorari statute here, what was Congress trying to do.

Were they trying to effect a change in policy or to formulate a new plan of judicial review?

We submit that what occurred here is simply that Congress realized all at once or there used to be, and there was for 112 years, an alternative and cumulative route.

Go one way you get a week, come back, go by bill in equity.

And we took that away in 1927.

Now, when we put in this Section 1256 we restore, there’s no change in policy, we restore the historic right of an applicant/appellant who was defeated in the Court of Customs and Patent Appeals to have a try for petition to this Court, and that it was not the intention of the court to change the situation as to the Commissioner of Patents who had never had any right for 112 years to go beyond the decision of the alternative court if he got leaked there.

And the reason we say that is specifically is this.

The legislative history of the first four drafts of Section 1256 contained the words, cases in the CCPA may be reviewed by the Supreme Court by certiorari granted on petition of any party.

Those words ‘of any party’ were taken out before the bill was enacted.

Now, if you will look at Section 1244, you will observe — 1254, that’s the statute coming up by the bill in equity, you’ll observe the words that of any party are there.

And 1255 which deals with a review of cases in the Court of Claims have the word petition of the United States or the claimant.

We submit the omission of that language of any party was deliberate.

The significance of the omission of the ‘any party’ language is further brought out by looking at the legislative history and the parallel as here of Section 1255 which started with the words ‘of any party’ and those words were changed to read of the United States or the claimant.

Now, we think when they took the words out of any party, the reason for it was this that it was deliberate and the reason was this.Looking at Section 1244 — I’m sorry 244, I’ll get it straight.

Section 144 of 35 U.S.C, if you go back in the history of that action, here’s what that provides.

It provides that upon the determination of the Court of Customs and Patent Appeals, they shall return to the Commissioner a certificate of its proceedings and decision which shall be entered the record of the patent laws and govern the further proceedings in the case.

We think it governs the Commissioner.

And I’ll go all the way back to the Patent Act of 1836 where the statute was a little more specific at that time and said that there shall be a decision by the appellant or in a route tribunal and their opinion being certified to the Commissioner.

He shall be governed thereby in the further proceedings that we have any application.

And that language is persisted right down to the present time that the Patent Office gets — the Commissioner gets back a certificate and the Patent Office shall be governed.

And therefore, if it’s governed, it doesn’t have any right to appeal and it never had a right of appeal historically for a 100 — appeal or petition to go beyond if the appellant elected the alternative route, the Commissioner never having a right to go any farther if he got leaked.

And we submit therefore that historically, he should not have that right now and it was not the intent or purpose of Congress to restore that right.

And they so indicated when they took out those words of any party from the legislative history.

Could I ask you a question?

There are some things in your brief and something which you started to say here before we got on other questions.

That may you think that you were also making a claim that the court — the case was never properly in the Court of Customs and Patent Appeals because of the failure to follow the administrative route to its conclusion.

Am I mistaken about that?

Dean Laurence:

Mr. Justice Harlan, you’re precisely correct.

I did not discuss it because at that time (Voice Overlap)

Well I thought I saw it in your brief and I didn’t find any answer in the Governments brief or supplemental brief and I didn’t hear you argue it, but I just wanted to know whether —

Dean Laurence:

May I answer that question in this way?

We say there is a preliminary question here which must be decided before the Court gets even to the merits question at all, and that was that the primary examiner who decided the affidavits could not comply had no authority to make that decision because under Section 135 of Title 35, only the Board of Patent and Interferences can make any determination of priority.

And what the examiner was doing was making a determination of priority here in this case when he said, “Your affidavits are not sufficient to entitle you to get into the interference.”

He effectively made that determination of priority.

He thereby usurped the function of the board of patent interference.

And I mentioned this earlier that Rule 204 (b) has been amended so that the primary examiner no longer makes the kind of determinations which he made here.

This case is moot as far as Rule 204 (b) is concerned.

That rule has been amended so that now all the primary examiner does is look at the affidavit to see that there’s a date in there before filing date of the patentee, then he declares the interference and fires it over to the Board of Patent and Interferences where it belongs to be determined.

Did you contend before the Court of Customs and Patent Appeals that they shouldn’t entertain the appeals —

Dean Laurence:

Yes, Your Honor.

We started our contention by a petition to the Commissioner on the point.

We petitioned the Commissioner, the Commissioner said that that was at record 36, is our petition to the Commissioner, the Commissioner said, “Not me, I think it’s an appellate matter.”

And then we went to the appeal on the jurisdictional point — jurisdictional sense of whether the primary examiner had a right to make this decision.

We also raise the question in the CCPA, so we have argued it all the way through.

Hugo L. Black:

In connection of just what you said, if it’s moot our usual course of course is to vacate the judgment — vacate it and remand it to be dismissed as moot, is that what you want done?

Dean Laurence:

The principle involved perhaps is not a moot principle here and it — the Court inquired, I think it was Mr. Justice Black who asked whether this case had any far reaching effect.

Let me say, and it’s covered in our brief that it does have in one respect, it’s not a test case here.

This isn’t a $2 or $36 case like Your Honors had yesterday.

It’s not a test case.

It goes only to the point if you’ll have to look at the TVA Act, the NASA Act, the AEC Act because what you’re deciding here is when is a process invention completed?

And those acts generally speaking provide that a man working for the Government completes his invention, if he completes his invention, it belongs to the Government.

If he doesn’t complete his invention until after he’s gone off the Government payroll, then it doesn’t belong to the Government.

Now, suppose that a man conceives his invention, he thinks of a process and he thinks of a way of carrying it out, he even carries it out but he doesn’t thrust with the product which he makes while he is in the Government employee or working on a NASA or AEC contract.

Then he leaves the Government.

So after he’s left the Government, he remembers what he was doing and he repeats the process, which he probably entitled to unless it’s a secret matter and he makes a product.

And he then fusses with a product and finds some use for it, and so he goes in patents of process that he has no right to —

Hugo L. Black:

Well, let me ask you one other question.

I see the light is on but I want to ask you this.

On looking at the record put in the opinion of the Board, I’m satisfied this time that the board did decide the abstract question which the Government raises and that’s what they based it on, on the cases they’ve had before.

Suppose one should be of the opinion that they did hold, that there had to be no utility or usefulness to the product, which is the result of the process, suppose one should believe that, and also believe from the record and from what you said that you’d be might be greatly injured if you were not given the chance to try to prove the utility of your product.

What would be the proper course then?

Dean Laurence:

As I understand your question, Mr. Justice Black, it would be whether you would remand —

Hugo L. Black:

What would be the proper disposition of the case on the lower circuits?

Do you want a chance to prove it if in case it would be held that it is wrong?

Dean Laurence:

I think we would have to do it this way.

If there was a remand to make a different affidavit perhaps that could be done, otherwise of course the real purpose here is to get the interference, and if we get the interference we’ll have to prove this utility.

Hugo L. Black:

It’s a matter, it seems to me, of great importance to you.

But if one should be of the opinion that there must be some utility shown of the product and they’ve held now that you didn’t do it, didn’t — they say it’s prima facie but if they decide that on the abstract question what would be the proper disposition?

Something to send you back to the Board or what?

How could your right be protected in other words?

Dean Laurence:

It could be sent back to — for a determination as to whether Manson could make an affidavit which was in better form, I suppose, in compliance.

But I think actually here —

But you didn’t make any application to amend your affidavit, did you?

Dean Laurence:

It’s not possible after the Board of Appeals has made its decision.

Well, whether it is or — well, I mean even before the Board, even before the — at any stage, did you ask to leave to amend?

Dean Laurence:

The record does not so reflect, Your Honor.

What is the fact?

Dean Laurence:

I was not in the case until after the case was through the Board of Appeals, so I cannot say.

But I think I’ve seen the complete record and I think I can say that there is no request.

There were five attempts to put in a satisfactory affidavit.

I got the impression, perhaps rightly or wrongly that’s why you and the Government lock horns in what should be the proper resolution that you prefer to stand on the broad proposition that you’re talking about, namely that you don’t have to allege the utility of an end product, or rather than have the case go back or leave to amend and try to show something that at least the — as the proceedings worked out below was not accepted as a sufficient showing to meet that original gap to the Board.

Dean Laurence:

I would submit, Mr. Justice Harlan, for the benefit of the chemical industry.

It would be desirable to have a decision on the abstract principle presented here —

If it’s the abstract then we ought to decide if it’s presented by this case.

It’s a different thing.

Dean Laurence:

We — we question whether it is presented by this case, but if it is we think it ought be decided here rather than remanded.

Hugo L. Black:

Did you argue to the Board that your product was useful?

Dean Laurence:

To the Board of Appeals?

Hugo L. Black:

Yes.

Dean Laurence:

I’m sorry sir, I did not argue to the Board of Appeals.

I was not in the case but I —

Hugo L. Black:

Was it argued?

Do you know whether or not it’s —

Dean Laurence:

I think it was argued to the Board that the product was useful as shown by the journal article.

Thank you, Your Honor.

Earl Warren:

Mr. Bender.

Paul Bender:

In light of the confusion which seems to exist of what the issue is before the Court, I’d like to respond to any question if the Court still has on that.

It’s our position that the broad issue that is whether process is useful simply because it produces a product is clearly before the Court because that’s what the Court of Customs and Patent Appeals decided.

They did not decide these narrower questions.

That is, they didn’t decide whether the affidavit was properly rejected by the right arm of the Patent Office and they didn’t decide whether the affidavit in fact properly alleged that the product had utility.

I don’t know whether those questions were presented to the Court of Customs and Patent Appeals or not, but surely the question they did decide before the court and the court ought to decide it.

Potter Stewart:

Well, do you think they proceeded on the hypothesis that the product was useless because they — even on that hypothesis they held that the process patent was still valid.

Paul Bender:

Yes, it makes sense in terms of the rule of law they were adopted not to get into these allegations.

Potter Stewart:

Right, and so assuming this Court might agree — disagree with them on the rule of law should not be responded have the opportunity of litigating the fact of whether or not the product was useful.

Paul Bender:

Well, certainly he should only have it if he raised that issue before the Court of Customs and Patent Appeals.

Potter Stewart:

Well do you say you don’t know the answer?

Paul Bender:

I don’t know the answer to that.

If he did raise it, however, I suggest that a remand probably may well not be necessary.

In our view, the decision of the Patent Office that there was no sufficient allegation of utility of the product, it was quite clearly correct.

The — the journal article which was mentioned which did suggest that there would be tumor inhibiting properties was not this compound.

It was a different one.

It was a homologue or an analogue, and it’s — and the basis of the Patent Office as a rejection of the reference to the journal article was that in this area of organic compounds, very slight differences in the compound can entirely change the use.

And it was in light of that that the affidavit stood and it was in light of that that the Patent Office decided the case.

And I think that was clearly correct.

Also, it seems to me that under the rule surely as it then existed.

Now, I don’t think any meaningful changes made, but surely as the rule then existed the Board of Appeals properly rejected the affidavit.

Paul Bender:

They had that function.

It said that the affidavit had to show prima facie priority and they held since there was no allegation of utility that the product.

It didn’t show prima facie the priority.

William J. Brennan, Jr.:

But Mr. Bender, suppose it’s not this case, so I get the Government’s argument.

Suppose Manson had been first here and his patent had been denied a patent on the ground that it didn’t show utility of the product.

Then Ringold comes along and he applies for patent.

Identical at all these facts for the application of Manson except that his specifications was as they did here alleged and say, the utility of the product.

Now, Manson would be denied, as I understand it on your view, a patent that the court did not allege utility of the product.

Now, the question is, would Ringold then be denied on the basis of prior art or that —

Paul Bender:

That would depend upon whether Manson was in the prior art.

If Manson’s had been kept completely secret, as it is, while it’s pending in the Patent Office and if Manson didn’t make his invention public after the rejection, then the process might not be in the prior art.

The process wasn’t in the —

William J. Brennan, Jr.:

Well, suppose it was?

Paul Bender:

Then —

William J. Brennan, Jr.:

Neither of them get a patent.

Paul Bender:

Then neither of them would get a patent.

William J. Brennan, Jr.:

What this earlier case that we heard argued this morning it’s co-pending patents, is that right?

Paul Bender:

Yes.

Byron R. White:

You’ve just given that one away —

Paul Bender:

Which, that one?

Hugo L. Black:

I thought you did.

Paul Bender:

I don’t understand which —

Byron R. White:

If you win the co-pending patent case automatically in Justice Brennan’s example, neither one of them can get a patent.

William J. Brennan, Jr.:

In this case, on the hypothetical example.

Paul Bender:

Oh no!

William J. Brennan, Jr.:

Who gets the patent?

Paul Bender:

Because as I said in the — if Manson’s application was denied, and Manson did not publish his findings because he has no obligation to publish.

I mean the application for patent does not constitute a public —

William J. Brennan, Jr.:

Isn’t it a pending — it’s just like the earlier case.

Paul Bender:

Yes.

William J. Brennan, Jr.:

Manson’s application is a co-pending application.

Paul Bender:

No, Mr. Justice Brennan.

The section of the statute which deals with co-pending patents and which suggest that they’re in the prior art only deals with co-pending patents which are ultimately issued, and that is our argument in Hazeltine, it only applies to co-pending patents which are ultimately issued.

It does not apply to co-pending patents which are not ultimately issued.

The reason is as in Hazeltine, we say, you should look at the law.

As of the time, the patents are going to be issued and if the co-pending one is going to be issued you shouldn’t issue another one which is just an insignificant advance on, because then you have these overlapping patents and the public wouldn’t get any benefits from the second one.

That’s why the argument is —

William J. Brennan, Jr.:

— may I ask this question?

Paul Bender:

Yes.

I just had one other question.

You said you didn’t know just what was argued in the Court of Customs and Patent Appeals.

Are the briefs in that court printed?

Paul Bender:

I don’t know.

Yes, Mr. Justice Harlan.

I assume that can be found in —

I would suppose that that would disclose whether or not the premise on which the case was argued.

Paul Bender:

I should think so.

I should undertake to send copies of the briefs to the Court and file if they’re already in the printed record.

Earl Warren:

I assume there’d been some difference with opinion between as to what the court of Patent Appeals actually held.

Will you state this please briefly as you can just what the opinion of the Government the Court of Patent Appeals did hold?

Paul Bender:

I believe that they held that on the assumption that a — the product was not useful, the process was still useful.

And therefore, if it produced the product, and therefore there was no need to investigate the utility of the product and that the Patent Office had been in error in requiring affidavits which swore to the utility of the product.

William O. Douglas:

Has the Patent Office take the position that all processes that really enlarge scientific knowledge are not patentable?

Paul Bender:

Well —

William O. Douglas:

Does it require commercial, is this —

Paul Bender:

No, it doesn’t require commercial utility.

In fact, it’s a —

William O. Douglas:

Well, utility smacks commercial —

Paul Bender:

There some of that element in there, but they have never — they have never said that the commercial that is profitable utility need be shown at the time.

William O. Douglas:

I’m not speaking of profit now.

William O. Douglas:

I’m just speaking of —

Paul Bender:

No, I don’t think they require commercial utility.

I’m not quite sure what that means.

William O. Douglas:

Well does — does the Patent Office deny a patent that merely enlarges our scientific knowledge, a process that enlarges our scientific knowledge?

Paul Bender:

If all it does is enlarge scientific knowledge —

William O. Douglas:

Then there’s no patent.

Paul Bender:

— then — it’s right.

I think their position clearly as simply as it you don’t give patents on knowledge.

You give patents on useful dimensions.

William O. Douglas:

No, no this is a process.

Paul Bender:

Well, a process — if you’re asking me for a patent on a process and all the process constitutes knowledge then you don’t —

William O. Douglas:

No, no the process shows you how, as I’ve said to Mr. Laurence, how you identify this new hitherto to undiscovered element like the atom.

Paul Bender:

Well, I think the Patent Office’s view is that the process is useful only if it eventuates any useful product.

William O. Douglas:

Whether of utilitarian worth.

Paul Bender:

So far as patents are concerned, yes.

William J. Brennan, Jr.:

So Mr. Bender, I gather on that question I put to you earlier, as you said if Manson had published this in an article then that would’ve been a prior art to defeat Ringold?

Paul Bender:

Yes, unless Ringold came in and I think there’s a provision that if you come in within a year of the publication, but yes.

William J. Brennan, Jr.:

It be —

Paul Bender:

Generally speaking.

William J. Brennan, Jr.:

But you say that if it’s merely a co-pending application.

Paul Bender:

Right.

William J. Brennan, Jr.:

The section doesn’t apply because that relates only to patents which ultimately issued.

Paul Bender:

Right, that’s our argument in Hazeltine and that’s what 102 (e) clearly provides.

William J. Brennan, Jr.:

What section is that?

Paul Bender:

Well, 102 (e) which is the —

William J. Brennan, Jr.:

(e)?

Paul Bender:

I think it’s (e) —

William J. Brennan, Jr.:

2 (e)?

Paul Bender:

102 (e) which —

William J. Brennan, Jr.:

Yes.

Paul Bender:

— is the co-pending section applies in terms only to ones which are ultimately granted.

And our argument at Hazeltine follows that under 103.