In Re Fisher: Raising the Utility Hurdle for Express Sequence Tags
Tashica T. Williams · bepress Legal Repository · 2006
The Federal Circuit's In re Fisher decision signaled a return to a more stringent statutory interpretation of utility' and provided the first judicial recognition of the United States Patent and Trademark Office's (PTO) 2001 Utility Guidelines. 2 In Fisher, the Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences (BPAI), denying a patent application claiming five express sequence tags (ESTs) 3 of the maize plant.4 The court dismissed Fisher's contention that the BPAI applied a heightened standard in evaluating the utility of the claimed ESTs, 5 thus reiterating the utility test outlined in Brenner v. Manson.6 Furthermore, the court found Fisher provided no evidence that the claimed ESTs correlated to a gene with a known function.7 Fisher presented the Federal Circuit with its first opportunity to rule on the circumstances under which ESTs satisfy the utility requirement of 35 U.S.C. § 101.Unfortunately, the Federal Circuit declined to provide the biotechnology community with much substantive guidance on this issue.8 Instead, the court simply held that Fisher's seven proposed uses for ESTs did not satisfy the statutory utility requirement.9 Presenting no bright-line rules, the Fisher decision provided little more than a rough framework for analyzing whether a proposed use for an EST satisfies the statutory utility requirement.This Note explores the EST utility standard and suggests that the invention's patentability under the utility analysis can be best conceptualized as a timeline tracking the invention's "ripeness."Part I outlines the