“…the more interesting question is whether or not such a creature could be patented (with the answer being a resounding “maybe”.”
by: Patrick Anderson | November 3, 2017
This past Halloween, our illustrious USPTO took their #CreepyIP team to popular content-sharing site reddit to answer questions from the public. However, one such question went unanswered:
Has anyone patented a horse-sized duck? Or a thousand duck-sized horses? Which one would you fight?
Since the USPTO has not seen fit to answer these questions, it seems only fitting that IPWire address them. As to whether or not anyone has successfully patented a horse-sized duck, unfortunately we did not have the time to conduct an exhaustive search. That said, the more interesting question is whether or not such a creature could be patented (with the answer being a resounding “maybe”).
US Patent 4,736,866, issued in 1988, claims a “transgenic non-human mammal all of whose germ cells and somatic cells contain a recombinant activated oncogene sequence introduced into said mammal, or an ancestor of said mammal, at an embryonic stage.” More commonly referred to as the “OncoMouse patent,” this invention was the work of researchers at Harvard College who sought to increase a mouse’s susceptibility to cancer, thus making the mouse more suitable for cancer research.
While few doubt the novelty and utility of OncoMouse, our theoretical horse-sized duck would, nevertheless, need to pass such tests. Luckily for our inventors, “[t]he threshold of utility is not high: An invention is “useful” under section 101 if it is capable of providing some identifiable benefit.” Juicy Whip v. Orange Bang. The identifiable benefits of a horse-sized duck are plentiful—beyond merely serving as a source of air, land, and water transportation—extending into personal protection and the disposal of stale bread. Also, ducks eat free at Subway, so feeding it would be inexpensive.
On the other hand, the patentability of one thousand duck-sized horses might face some tough obviousness questions. The question itself seems to presuppose the pre-existence of a duck-sized horse and merely suggests that there are more of them. When combining multiple pre-existing elements, the Supreme Court’s decision in KSR Int’l v. Teleflex requires some synergy in order to find the combination patentable.
Thus, unless our inventor here has discovered and harnessed one thousand duck-sized horses to discover a threshold at which their behavior changes in a way that a person of ordinary skill could not have predicted previously, he or she would, sadly, be denied a patent.
As to which we would rather fight, I’ll leave that to the boys of IPFrequently to answer …