What can Monk teach you about patent law?

Posted Tuesday, March 15, 2011.

Also titled “can you patent something that is considered immoral?”

My fiancee and I were watching a rerun of the TV show Monk last week. It was an episode from Season 4, with Jeffrey Donovan of Burn Notice guest-starring as an astronaut. As with all episodes of Monk, a murder had been committed. Here, the astronaut was the prime suspect. Trouble was, at the time the coroner suspected the victim died, the astronaut was in space.

It seemed like a pretty good alibi until Detective Monk figured out that the astronaut had heavily drugged the victim before he left and then propped her up in a homebuilt machine that carried out her killing a few days later, while he was in space. The gory details are not necessary for this blog, but my first thought upon seeing the “assassination machine” was “he won’t be able to get a patent for that invention!”

Perhaps that means I think about patent law too much of the time, but it’s true: the Supreme Court has ruled that assassination machines are not patentable subject matter. I have very few (ok, no) clients that are interested in patenting such an awful thing, fortunately, but is it possible to get a patent for something of questionable moral value? In most cases, provided the invention has some utility to someone, the answer is yes.

The leading case on this question is Juicy Whip, Inc. v. Orange Bang, Inc. (I’m not making this up). The product in question was a drink dispenser, of the type that has a clear container at the top in which there is liquid and a blending apparatus, so that it looks like your drink is being mixed and is ready to be dispensed. (If you’ve seen an Orange Julius store at the mall, you know what I am talking about.) In reality, the container at the top of the machine in which the orange liquid is swirling around is a decoy. Your drink is really being dispensed and mixed from a box that is hidden under the counter, just as with a soda-fountain dispenser.

The reason for the decoy is that there is something visually appealing about the juice swirling around in the container, but if that were the real juice, the container would need to be emptied and cleaned regularly and that’s too much effort. The decoy lets the consumer believe he or she is seeing the actual juice, but in reality it’s going to get mixed like a conventional fountain soda.

So the company holding the patent sued another maker of beverage dispensers for infringement. The defendant argued the original patent was invalid so they shouldn’t be liable for infringement. That’s a common defense in an infringement suit, but what is unusual is that the defendant argued the reason the patent should be invalid is because the subject matter of the patent is basically deceiving consumers. Isn’t that immoral? And if so, why should the government grant a patent on immoral subject matter? The interesting part of this defense is that the defendant is basically saying, “hey, we’re doing something immoral.”

In any event, the Court of Appeals for the Federal Circuit (the Federal appellate court charged with hearing all appeals related to patents, regardless of geography) held that the key question is one of utility, not morality. The subject matter of the patent is in fact legal, even if it is questionable whether it is moral, and since there is something useful about not having to clean the dispenser it has sufficient utility for a patent.

So where is the line where something of questionable morality becomes unpatentable? It is shifting with time. For example, at one time gambling devices weren’t patentable subject matter because gambling was seen to be immoral, but you could get a patent on a new and novel slot machine today provided it met all the other requirements for patentabililty such as utility (making money for a casino, in this case).

But “…inventions that are injurious to the well-being, good policy, or sound morals of society…” are unpatentable, including “a new invention to poison people, or to promote debauchery, or to facilitate private assassination.” (This language is from Lowell v. Lewis, a case from 1817.)

So, astronaut resembling Jeffrey Donovan, your assassination machine was clever, but not clever enough to fool Detective Monk, and definitely not eligible for a patent.

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