Case name and citation: Isenstead v. Watson, 157 F.Supp 7 (D.C. 1957).
Facts: Isenstead applied for a patent on a medical compound used to test the function of the human liver. Claim 2 of the patent application listed the quantities of three ingredients used to make a composition of matter that would shift blood proteins.
Procedural Posture: The application was rejected by the Examiner of the Patent Office for two reasons. The first reason for rejection was that the invention had been disclosed in a printed publication more than a year before the filing of the application, and this disclosure constituted a bar to the application. The second reason for rejection was that the proof of utility of the invention was inadequate and insufficient. Isenstead appealed to the Board of Appeals of the Patent Office. The Board of Appeals affirmed the Examiner’s decision. Isenstead then appealed to the United States District Court for the District of Columbia.
Holding: The District Court affirmed the decision of the Board of Appeals. The court held that the tests and results submitted by Isenstead were insufficient to find utility. The court said because of its finding of lack of utility, it was not necessary to answer the question of whether the invention had been disclosed more than a year prior to the filing of the application.
Important dicta: The court adopted the definition of utility as meaning an invention “will attain the purpose and operate as disclosed and claimed by the inventor.†The court said that applications for medical patents should be considered with “great care and scrutiny†because when a patent is granted, the public tends to rely on the medical device simply because it has been given a patent.
Likely future importance: When an inventor wishes to obtain a patent on a medical device, he must first thoroughly test the device. If the tests are successful, then he should apply for a patent and provide sufficient results to show the Patent Office the utility of his invention.
Critical analysis: The court’s main concern seemed to be public policy. The court reasoned that granting a patent does not necessarily mean that the invention is a good one, yet the public relies on the issuance of a patent as an “official imprimatur.†Because of this reliance, medical inventions must be particularly scrutinized by the Patent Office.
Facts: Isenstead applied for a patent on a medical compound used to test the function of the human liver. Claim 2 of the patent application listed the quantities of three ingredients used to make a composition of matter that would shift blood proteins.
Procedural Posture: The application was rejected by the Examiner of the Patent Office for two reasons. The first reason for rejection was that the invention had been disclosed in a printed publication more than a year before the filing of the application, and this disclosure constituted a bar to the application. The second reason for rejection was that the proof of utility of the invention was inadequate and insufficient. Isenstead appealed to the Board of Appeals of the Patent Office. The Board of Appeals affirmed the Examiner’s decision. Isenstead then appealed to the United States District Court for the District of Columbia.
Holding: The District Court affirmed the decision of the Board of Appeals. The court held that the tests and results submitted by Isenstead were insufficient to find utility. The court said because of its finding of lack of utility, it was not necessary to answer the question of whether the invention had been disclosed more than a year prior to the filing of the application.
Important dicta: The court adopted the definition of utility as meaning an invention “will attain the purpose and operate as disclosed and claimed by the inventor.†The court said that applications for medical patents should be considered with “great care and scrutiny†because when a patent is granted, the public tends to rely on the medical device simply because it has been given a patent.
Likely future importance: When an inventor wishes to obtain a patent on a medical device, he must first thoroughly test the device. If the tests are successful, then he should apply for a patent and provide sufficient results to show the Patent Office the utility of his invention.
Critical analysis: The court’s main concern seemed to be public policy. The court reasoned that granting a patent does not necessarily mean that the invention is a good one, yet the public relies on the issuance of a patent as an “official imprimatur.†Because of this reliance, medical inventions must be particularly scrutinized by the Patent Office.