Utility (patent)
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In United States patent law, utility is a patentability requirement.[1] As provided by 35 U.S.C. § 101, an invention is "useful" if it provides some identifiable benefit and is capable of use.[2] The majority of inventions are usually not challenged as lacking utility,[3] but the doctrine prevents the patenting of fantastic or hypothetical devices such as perpetual motion machines.[4]
The patent examiners guidelines require that a patent application expresses a specific, credible, and substantial utility.[5] Rejection by an examiner usually requires documentary evidence establishing a prima facie showing that there is no specific, substantial, and credible utility.
European patent law does not consider utility as a patentability criterion.[6] Instead, it requires that to be patentable an invention must have industrial applicability.[7]
Contents |
[edit] Utility categories
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.
[edit] Operability
Operability is a requirement of functionality, also known as General Utility.
Operability concerns whether the invention actually works or accomplishes the utility that the inventor claims. The operability of an invention is presumed to be true unless proved otherwise by the United States Patent and Trademark Office (USPTO). Operability protects against fraudulent and fantastic inventions that do not work.
If an invention does not work as described in the claims, it may not be considered useful and may be deemed inoperable. An inoperable invention may fail to satisfy the enablement requirement under 35 U.S.C. § 112 because the rationale is that "an inventor cannot properly describe how to use an inoperable invention...."[8] However, "the presence of some inoperative embodiments does not necessarily render a claim invalid as lacking utility."[9] Janice Mueller, professor of law for the University of Pittsburgh, gives an example of this phenomenon. She writes, "consider a patent claim to a composition of matter comprising component X from 20 to 80 weight percent, for which the inventor asserts the utility of shrinking cancer tumors. If it is established that the embodiment of the invention in which X is present at 30 percent does not have any tumor-shrinking effect on cancer cells, this means that at least that particular species within the genus of all compositions having X present at between 20 to 80 percent is inoperable; that is, the X equals 30 percent species does not possess the utility asserted for the genus."[9] She further explains, however, that while some inoperative embodiments do not render a claim invalid, the specification portion of the patent application must still provide enough information that a person having ordinary skill in the art (PHOSITA) could determine which embodiments are operable and which are not, allowing the PHOSITA to practice the invention without "undue experimentation."[9]
[edit] Beneficial utility
Beneficial utility was first recognized as a requirement in United States patent law in the 1817 case Lowell v. Lewis;[10] the utility bar enunciated in this requires that the patented invention “not be frivolous or injurious to the well-being, good policy, or sound morals of society”.[10] However, subsequent patents were granted to devices that might be immoral (e.g. gambling devices, see, e.g., Brewer v. Lichtenstein[11] and Ex parte Murphy[12]) 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)).[13] In Juicy Whip, the court asserts that, “[t]he threshold of utility is not high: An invention is ‘useful’ under section 101 if it is capable of providing some identifiable benefit.” "A rejection under 35 U.S.C. 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy." (Manual of Patent Examining Procedure 706.03(a)(II))
[edit] 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."[14] 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 compound inventions, because of the level of uncertainty when working with these compounds. The United States Supreme Court in Brenner v. Manson held that a novel process for making a known steroid 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."[15] Practical or specific utility is the requirement for an invention to have a particular purpose.[15]
[edit] History and development
Lowell v. Lewis[10] established the primary focus of utility in United States patent law until the twentieth century. It defined a useful invention as one that is not “frivolous or injurious to the well-being, good policy, or sound morals of society.” Specifically, "[t]he word ‘useful’ … is incorporated into the [patent law] in contradistinction to [the] mischievous or [the] immoral." This concept of utility has since been renamed “beneficial utility” and is defined to exclude from patentability anything immoral or deceitful.[16] The USPTO and courts no longer consider beneficial utility nor the deceitful or immoral qualities of inventions, beginning with, for example, cases sustaining the patentability of a slot machine in 1977,[17] and drink machines with decorative reservoirs that did not contain the drink actually dispensed.[16] However, the USPTO and courts continue to consider whether or not an invention has a definable use at the time of application, excluding inventions that are not operable, a requirement of utility that the invention do what is claimed.[18]
As a result of the new technologies and new fields from which patent applications come, the United States Supreme Court has fashioned a higher bar of utility, known as specific utility.[15] In one case, the Court found that a steroid still in development was not useful in the sense used in the patent law, because it had no defined use at the time of the application.[15] "A patent is not a hunting license," the Court stated.[15] It is “not a reward for the search, but compensation for [the search’s] successful conclusion.”[15] This standard for utility cannot be met until a “specific benefit exists in currently available form.”[15] In In re Brana, United States Court of Appeals for the Federal Circuit has ruled that utility requirement for biomedical invention does not require formal approval by the Food and Drug Administration.[19]
[edit] Burden of proof during prosecution
During patent prosecution, the disclosed utility is presumed valid. The patent office bears the burden to disprove utility. The standard the USPTO uses is whether there is a reasonable doubt 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.[19] The invention must possess utility at the time of application.[20]
[edit] Novelty vs. utility
Unlike novelty, a court will not assume that an item has utility.[21] A utility does not need to be obvious to the user.[16] A patented item can be shown to have utility independent of patents granted for other inventions.[clarification needed] An application for a previously patented invention that included a use the applicant had not previously contemplated has been rejected because it was not novel.[22]
[edit] Notes and references
- ^ U.S. CONST., art. I, §8, cl. 8 (Congress shall have the power "to promote the Progress of Science and useful Arts..." (emphasis not in original)); 35 U.S.C. § 101 (2008) ("Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter...may obtain a patent...." (emphasis not in original)
- ^ Bedford v. Hunt, 3 F. Cas. 37 (C.C. Mass. 1817)("The law...does not look to the degree of utility; it simply requires that it shall be capable of use....")
- ^ Janice M. Mueller, Patent Law 235 (3d. ed. 2009)
- ^ Merges, Robert P. & Duffy, John F. Patent Law and Policy: Cases and Materials. 4th ed. New York: LexisNexis. 1999
- ^ See Brenner v. Manson, 383 U.S. 519 (1966); USPTO, Utility Examination Guidelines, 66 Fed. Reg. 1092, 1098 (Jan. 5, 2001) available at http://www.uspto.gov/web/offices/com/sol/notices/utilexmguide.pdf
- ^ In this respect, decision T 388/04 of March 22, 2006 of the Boards of Appeal of the European Patent Office has made it clear that "subject-matter or activities may be excluded from patentability under Article 52(2) and (3) EPC even where they have practical utility" (headnote III.), thus ruling out the utility of an invention as a decisive patentability criterion.
- ^ Under the European Patent Convention, see for instance Article 57 EPC.
- ^ Janice M. Mueller, Patent Law 245 (3d. ed. 2009)
- ^ a b c Janice M. Mueller, Patent Law 247 (3d. ed. 2009)
- ^ a b c Lowell v. Lewis, 15 F. Cas. 1018 (C.C.D. Mass. 1817)
- ^ 278 F. 512 (7th Cir. 1922)
- ^ 200 U.S.P.Q. 801 (P.T.O. Bd. App. 1977)
- ^ 185 F.3d 1364 (Fed. Cir. 1999); 51 U.S.P.Q.2d (BNA) 1700
- ^ Janice M. Mueller, Patent Law 236 (3d. ed. 2009).
- ^ a b c d e f g Brenner v. Manson, 383 U.S. 519 (1966).
- ^ a b c Juicy Whip v. Orange Bang, 185 F.3d 1364 (Fed. Cir. 1990)
- ^ Ex parte Murphy, 200 U.S.P.Q. 801 (Bd. Pat. App. & Int. 1977)
- ^ Newmann v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989).
- ^ a b In re Brana, 51 F.3d 1560 (Fed. Cir. 1995).
- ^ Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. cir. 2005).
- ^ Busch v. Jones, 184 U.S. 598 (1902).
- ^ In re Dillon, 919 F.2d 688 (Fed. Cir. 1990).
[edit] See also
- Diamond v. Diehr
- Reduction to practice
- State Street Bank v. Signature Financial Group
- Sufficiency of disclosure
- Utility in Canadian patent law
- Utility model
