## Facts

- A patent applicant sought claims to a chemical process for synthesizing a known steroid compound.
- The Patent Office refused to declare an interference on priority and rejected the application because it did not disclose any specific utility for the compound produced by the process.
- The Board of Appeals affirmed the rejection.
- The Court of Customs and Patent Appeals reversed, concluding that when a process yields a known product, it need not show utility for that product if not contrary to public interest.
- The asserted “utility” was that the steroid belonged to a class of compounds being screened for possible antitumor activity, supported by reports that a closely related compound showed tumor-inhibiting effects in mice.
- The Commissioner of Patents sought Supreme Court review.

## Issues

1. Whether the Supreme Court has certiorari jurisdiction to review patent decisions of the Court of Customs and Patent Appeals upon petition of the Commissioner of Patents.
2. Whether, under 35 U.S.C. § 101, a chemical process is patentable when the only shown utility of its product is research or screening, rather than a specific, presently available practical use.

## Decision

- The Court held it had certiorari jurisdiction under 28 U.S.C. § 1256 to review the Court of Customs and Patent Appeals in patent cases.
- On the merits, the Court reversed the Court of Customs and Patent Appeals.
- The Court held that the practical utility of the compound produced is an essential element of a prima facie showing of patentability for a chemical process.
- A process is not patentable when its only asserted utility is to produce a compound for scientific investigation or screening for possible future uses.
- It was insufficient that the process “worked” by producing the intended product, and insufficient to infer utility from an “adjacent homologue” that had shown activity.

## Legal Principles

- Patentable subject matter under § 101 must be “useful”; for chemical processes, utility requires a specific, substantial, and presently available practical use.
- “Research utility” alone—producing compounds as objects of study or as candidates in screening programs—does not satisfy § 101.
- Utility is not established merely by showing that a process yields the intended product.
- A patent monopoly is justified by a quid pro quo: public benefit from an invention with substantial, current utility; patents should not issue where they would preempt scientific development without demonstrated present benefit.

## Conclusion

The Court sustained the Patent Office’s rejection, holding that § 101 requires a concrete, presently available practical utility for the product of a chemical process, and that speculative or research-only utility cannot support a process patent, while also confirming the Court’s certiorari jurisdiction over the Court of Customs and Patent Appeals in patent matters.


Brenner v. Manson, 383 U.S. 519 (1966)