Brenner v. Manson

LOCATION: Congress

DECIDED BY: Warren Court (1965-1967)

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

Facts of the case


Media for Brenner v. Manson

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.