Utility (patent)
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In United States patent law, utility is a patentability requirement. As provided by , an invention is "useful" if it provides some identifiable benefit and is capable of use and "useless" otherwise. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines. The
patent examiner A patent examiner (or, historically, a patent clerk) is an employee, usually a civil service, civil servant with a scientific or engineering background, working at a patent office. Duties Due to a long-standing and incessantly growing backlog of u ...
s guidelines require that a
patent application A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claim (patent), claims stated in a formal document, including necessary officia ...
expresses a specific, credible, and substantial utility. Rejection by an examiner usually requires documentary evidence establishing a '' prima facie'' showing that there is no specific, substantial, and credible utility. The main reason for having the utility requirement is to prevent issuing patents on things which are speculative and may block useful inventions in the future. In a pharmaceutical context, the utility problem usually arises when there is a patent claim on a new drug, but the patent disclosure does not specify (or does not prove) what disease this drug treats. Notably, a full FDA approval of the drug is not required before a patent application is filed. It suffices to demonstrate that this drug candidate passes some established
in vitro ''In vitro'' (meaning ''in glass'', or ''in the glass'') Research, studies are performed with Cell (biology), cells or biological molecules outside their normal biological context. Colloquially called "test-tube experiments", these studies in ...
test (see below). One commentator explained in 1853 the rationale against ''useless inventions'' as:
A patent for a useless invention is thought by some to be void at common law by others by force of the Statute of Monopolies which renders void grants of privileges which tend to the hurt of trade or are generally inconvenient. Now if a monopoly were allowed in a useless invention other persons would be prevented from improving it or turning it to any account whatever so that combinations of utility might be impeded. It would stand in the way of real inventors and hence be mischievous to the public generally.
European patent law and Patent Cooperation Treaty instead of ''utility'' use the term industrial applicability. Although it serves a similar purpose as the US ''utility'' and patentable subject matter requirements, it is more narrow in practice.


Utility criteria

In considering the requirement of utility for patents, there are three main factors to review: operability of the invention, a beneficial use of the invention, and practical use of the invention.


Operability

The importance of operability as a requirement of claims is disputed. Janice Mueller claims that an inoperable invention may fail to satisfy the enablement requirement under 35 U.S.C. § 112 because "an inventor cannot properly describe how to use an inoperable invention...." However, as authority Ms. Mueller's textbook cites to another textbook, Landis on Mechanics of Patent Claim Drafting, which itself cites section 2173.05(l) in the Manual of Patent Examining Procedure. Section 2173.05(l) has not been part of the Manual of Patent Examining Procedure since the 1990s. The most recent pronouncement of the Manual of Patent Examining Procedure is 2107.01:
Situations where an invention is found to be "inoperative" and therefore lacking in utility are rare, and rejections maintained solely on this ground by a Federal court even rarer. In many of these cases, the utility asserted by the applicant was thought to be "incredible in the light of the knowledge of the art, or factually misleading" when initially considered by the Office. ... Other cases suggest that on initial evaluation, the Office considered the asserted utility to be inconsistent with known scientific principles or "speculative at best" as to whether attributes of the invention necessary to impart the asserted utility were actually present in the invention. ... However cast, the underlying finding by the court in these cases was that, based on the factual record of the case, it was clear that the invention could not and did not work as the inventor claimed it did. Indeed, the use of many labels to describe a single problem (e.g., a false assertion regarding utility) has led to some of the confusion that exists today with regard to a rejection based on the "utility" requirement.


Beneficial utility

Beneficial utility became established as a requirement in United States patent law in 1817 as a result of '' Lowell v. Lewis'' (1 Mason. 182; 1 Robb, Pat. Cas. 131 Circuit Court, D. Massachusetts. May Term. 1817.). The utility criterion established by this case is, as Justice
Joseph Story Joseph Story (September18, 1779September10, 1845) was an American lawyer, jurist, and politician who served as an associate justice of the Supreme Court of the United States from 1812 to 1845. He is most remembered for his opinions in ''Martin ...
wrote in the Court's decision, that, to be patentable, an invention must be "useful" and must "not be frivolous or injurious to the well-being, good policy, or sound morals of society". In spite of this ruling however, patents continued to be granted for devices that could be deemed immoral (e.g. gambling devices, see, e.g., Brewer v. Lichtenstein and ''Ex parte Murphy'') or deceitful (see, '' Juicy Whip, Inc. v. Orange Bang, Inc.'' (dealing with a juice dispenser that arguably deceived the public into believing that the liquid seen in the attached reservoir was that which was being dispensed)). In ''Juicy Whip'', the Court of Appeals for the Federal Circuit put an end to the requirement: "Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted…we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public."( Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364, 1367–68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999), see also Manual of Patent Examining Procedure 706.03(a)(II))


Practical utility

The last utility category is practical or specific utility. According to Mueller, "to be patentable an invention must have some real-world use." The utility threshold is relatively easy to satisfy for mechanical, electrical, or novelty inventions, because the purpose of the utility requirement is to ensure that the invention works on some minimal level. However, the practical or specific utility requirement for patentability may be more difficult to satisfy for chemical or biological inventions, because of the level of uncertainty in these fields. The
United States Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that turn on question ...
in '' Brenner v. Manson'' (in 1966) held that a novel process for making a known
steroid A steroid is an organic compound with four fused compound, fused rings (designated A, B, C, and D) arranged in a specific molecular configuration. Steroids have two principal biological functions: as important components of cell membranes t ...
did not satisfy the utility requirement, because the patent applicants did not show that the steroid served any practical function. The Court ruled, "... a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute."Brenner v. Manson, 383 U.S. 519 (1966). Practical or specific utility is the requirement for an invention to have a particular purpose.


History and development

The very first US Patent Act of 1790 required patentable inventions to be "sufficiently useful and important". An 1817 case ''Lowell v. Lewis'' (Circuit Court, D. Massachusetts) proclaimed that: ''the word "useful," therefore, is incorporated into the atentact in contradistinction to mischievous or immoral.'' This very broad definition survived well into the Twentieth Century. It was the basis for the ''beneficial utility'' doctrine, which excludes from patentability anything immoral or deceitful.Juicy Whip v. Orange Bang, 185 F.3d 1364 (Fed. Cir. 1990) However, in the 1970's after cases establishing patentability of a slot machine in 1977, and drink machines with decorative reservoirs that did not contain the drink actually dispensed, the
United States Patent and Trademark Office The United States Patent and Trademark Office (USPTO) is an List of federal agencies in the United States, agency in the United States Department of Commerce, U.S. Department of Commerce that serves as the national patent office and trademark ...
and federal courts no longer consider beneficial utility nor the deceitful or immoral qualities of inventions. However, it is not only "mischievous or immoral" inventions, that fase the utility challenge. Oftentimes new chemicals, which are known to be useful as a class, but have not demonstrated a "specific, substantial and credible utility" are denied a patent. The landmark decision in this area is 1966 Brenner v. Manson. In this case, the
SCOTUS The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that turn on questions ...
concluded that a new
steroid A steroid is an organic compound with four fused compound, fused rings (designated A, B, C, and D) arranged in a specific molecular configuration. Steroids have two principal biological functions: as important components of cell membranes t ...
was not "useful" in the meaning of the patent law, because it had no defined use at the time of the application. "A patent is not a hunting license," the Court stated. It is "not a reward for the search, but compensation for he search'ssuccessful conclusion." This standard for utility cannot be met until a "specific benefit exists in currently available form." On the same day as Brenner v. Manson, the Court decided two other cases In re Kirk and In re Joly. These cases denied patentability to chemical intermediates for products, which had no known use. In 1955
United States Court of Appeals for the Federal Circuit The United States Court of Appeals for the Federal Circuit (in case citations, Fed. Cir. or C.A.F.C.) is one of the 13 United States courts of appeals. It has special appellate jurisdiction over certain categories of cases in the U.S. federa ...
in '' In re Brana ''clarified, that ''utility'' requirement for pharmaceutical inventions does not require formal approval by the
Food and Drug Administration The United States Food and Drug Administration (FDA or US FDA) is a List of United States federal agencies, federal agency of the United States Department of Health and Human Services, Department of Health and Human Services. The FDA is respo ...
.In re Brana, 51 F.3d 1560 (Fed. Cir. 1995)
Instead an
in vitro ''In vitro'' (meaning ''in glass'', or ''in the glass'') Research, studies are performed with Cell (biology), cells or biological molecules outside their normal biological context. Colloquially called "test-tube experiments", these studies in ...
proof of efficacy, using a known test is sufficient. In 1995, the USPTO published new utility guidelines, which eliminated the "substantial", but retained “specific” and “credible” requirements. In the case of a process of making chemicals, the utility of the process can be established only if a product of this process has a utility. Thus, a process resulting only in products, which have no known use, is not patentable. Another landmark decision related to utility of biological inventions was 2005 case In re Fisher. It denied patentability of express sequence tags (which are “tiny portion of an entire gene that can be used to help identify unknown genes and to map their positions within a genome”), because their only known use at the time of patent application was as a research tool. The utility of invention must be demonstrated in the patent application itself. Post application activities cannot be used to prove utility.


Burden of proof during prosecution

During
patent prosecution Patent prosecution is the interaction between applicants and a patent office with regard to a patent application or a patent. The prosecution process is broadly divided into two phases: pre-grant and post-grant prosecution. Pre-grant prosecuti ...
, the disclosed utility is presumed valid. The patent office bears the burden to disprove utility. The standard the USPTO uses is whether it is more likely than not that it would lack utility from the perspective of a person having ordinary skill in the art. If the examiner shows evidence that the invention is not useful, the burden shifts to the applicant to prove utility. The applicant can then submit additional data to support a finding of utility. The invention must possess utility at the time of application.Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. cir. 2005).


See also

* '' Diamond v. Diehr'' * Incredible utility * Reduction to practice * '' State Street Bank v. Signature Financial Group'' *
Sufficiency of disclosure Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claim (patent), claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requ ...
* Utility in Canadian patent law *
Utility model A utility model is a patent-like intellectual property right to protect inventions. This type of right is available in many countries but, notably, not in the United States, United Kingdom or Canada. Although a utility model is similar to a patent ...


Notes and references


External links


2107 Guidelines for Examination of Applications for Compliance with the Utility Requirement
(USPTO website) {{DEFAULTSORT:Utility (Patent) United States patent law