Chapter §10.03 Historical Development

• Jurisdiction: United States

§10.03 Historical Development

[A] Justice Story's Standard

Patentable utility does not require commercial success in the marketplace. Nor does it require that an invention work better than the inventions that came before it. Rather, the utility requirement simply ensures that the invention works on some minimal level.

The early decision of Bedford v. Hunt illustrates this principle.¹⁹ The utility of a patented method for making shoes and boots was challenged in Bedford on the ground that "the invention was not useful; but upon experience had been found not to answer the purpose expected, and that this mode of making boots and shoes had been of late much laid aside."²⁰ At least according to the accused infringer, the patented bootmaking method did not work very well and was not being used in the marketplace (other than by the accused infringer, of course).

The noted patent jurist and Supreme Court Justice, Joseph Story,²¹ refused to invalidate the patent in Bedford as lacking utility. Story rejected the notion that the patent law is concerned with the degree of utility of an invention:

By useful invention, in the statute, is meant such a one as may be applied to some beneficial use in society, in contradistinction to an invention, which is injurious to the morals, the health, or the good order of society. It is not necessary to establish, that the invention is of such general utility, as to supersede all other inventions now in practice to accomplish the same purpose. It is sufficient, that it has no obnoxious or mischievous tendency, that it may be applied to practical uses, and that so far as it is applied, it is salutary. If its practical utility be very limited, it will follow, that it will be of little or no profit to the inventor; and if it be trifling, it will sink into utter neglect. The law, however, does not look to the degree of utility; it simply requires, that it shall be capable of use, and that the use is such as sound morals and policy do not discountenance or prohibit. ²²

Story's view of utility profoundly shaped U.S. patent law. The law does not look to how useful an invention is, but simply requires that it have some practical use to society.

[B] Brenner v. Manson (U.S. 1966)

The U.S. Supreme Court most recently addressed the requirement of patentable utility in its 1966 decision, Brenner v. Manson.²³ The controversial Manson decision arguably represents the high-water mark for what is required to satisfy the utility requirement of 35...