Chapter §10.07 Immoral or Deceptive Inventions

• Jurisdiction: United States

§10.07 Immoral or Deceptive Inventions

Early U.S. judicial decisions recognized a morality component within the utility requirement. For example, Justice Story defined patentable utility in 1817 as an invention that "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."⁹⁴ Applying this standard, U.S. courts including the Court of Appeals for the Second Circuit subsequently invalidated patents directed to artificially spotted tobacco leaves⁹⁵ and faux-seamed women's hosiery.⁹⁶ These decisions illustrate the difficulty of assigning to judges or USPTO examiners the task of passing judgment on which inventions are moral or immoral. Such value-laden judgments are often highly personalized and typically implicate community standards that vary over time.

In 1977, the USPTO issued a decision signaling that the agency would no longer reject inventions on the ground that they might be viewed by some segment of society as immoral. In Ex parte Murphy,⁹⁷ the agency upheld the patentability of a "one-armed bandit" slot machine. The USPTO Board of Appeals explained that "while some may consider gambling to be injurious to the public morals and the good order of society, we cannot find any basis in 35 U.S.C. 101 or related sections which justify a conclusion that inventions which are useful only for gambling ipso facto are void of patentable utility."⁹⁸ The Board concluded that "this Office should not be the agency which seeks to enforce a standard of morality with respect to gambling, by refusing, on the ground of lack of patentable utility, to grant a patent on a game of chance if the requirements of the Patent Act otherwise have been met."⁹⁹

In 1999, the Federal Circuit affirmed the rationale of Murphy in Juicy Whip, Inc. v. Orange Bang, Inc.¹⁰⁰ The patent in suit was directed to a beverage dispensing machine that included a transparent display chamber of the dispensed product, permitting consumers to see in advance the drink they believed they were buying. The patented machine is depicted in Figure 10-2.

FIGURE 10-2. Post-Mix Beverage Dispenser with an Associated Simulated Visual Display of Beverage, U.S. Patent No. 5,575,405

In actuality the product (syrup and water) was mixed just before dispensing, so that the customer was not given the beverage that she had seen in the display chamber.¹⁰¹ A district court invalidated the patent in suit under 35 U.S.C...