In re Dane K. Fisher: An Exercise in Utility

Abstract

Article I, Section 8, Clause 8 of the United States Constitution provides for exclusive rights to inventors in order to “promote the Progress of Science and useful Arts.” The United States Court of Appeals for the Federal Circuit in the recent decision of In re Dane K. Fisher and Raghunath V. Lalgudi, 421 F.3d 1365 (Fed. Cir. 2005) denied patentability to expressed sequence tags (ESTs) because they were “only tools to be used along the way in the search for a practical utility” and, therefore, lacked “an immediate real world benefit” requisite to a finding of “substantial” utility considered mandatory under 35 U.S.C. § 101. This holding misconstrues legal precedent and threatens the patentability of many inventions, the benefit of which may be immediate but not fully appreciated until much later. Instead, where the application includes “an assertion of utility and an indication of the use or uses intended” as tools for research, statutory utility should be acknowledged. Patentability based on the benefit of such subject matter should be evaluated under the statutory requirement of non-obviousness under 35 U.S.C. § 103, which has its roots in early, broad interpretations of the phrase “new and useful” that first appeared in Section 1 of the Patent Act of 1793.