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]

Utility criterion[edit]

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[edit]

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...."[8] 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)[9] 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[edit]

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 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”.[10] 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[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))

Practical utility[edit]

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]

History and development[edit]

The legal definition of what constitutes a useful invention established in Lowell v. Lewis remained the controlling definition of utility in United States patent law into the Twentieth Century, when it was superseded by the beneficial utility doctrine, which is defined to exclude from patentability anything immoral or deceitful.[16] The United States Patent and Trademark Office and federal 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]

Burden of proof during prosecution[edit]

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]

Novelty vs. utility[edit]

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]

See also[edit]

Notes and references[edit]

  1. ^ 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)
  2. ^ 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....")
  3. ^ Mueller, Janice M. (2009). Patent Law (3rd ed.). New York: Aspen. p. 235. ISBN 9780735578319. 
  4. ^ Merges, Robert P.; Duffy, John F. (2008). Patent Law and Policy: Cases and Materials (4th ed.). New York: LexisNexis. ISBN 9781422417645. 
  5. ^ 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
  6. ^ 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.
  7. ^ Under the European Patent Convention, see for instance Article 57 EPC.
  8. ^ Mueller, Janice M. (2009). Patent Law (3rd ed.). New York: Aspen. p. 245. ISBN 9780735578319. 
  9. ^ Faber, Robert C. (1990). Landis on Mechanics of Patent Claim Drafting (3rd ed.). Practising Law Inst. ISBN 9780872240070. 
  10. ^ http://cyber.law.harvard.edu/IPCoop/17lowe.html
  11. ^ 278 F. 512 (7th Cir. 1922)
  12. ^ 200 U.S.P.Q. 801 (P.T.O. Bd. App. 1977)
  13. ^ 185 F.3d 1364 (Fed. Cir. 1999); 51 U.S.P.Q.2d (BNA) 1700
  14. ^ Mueller, Janice M. (2009). Patent Law (3rd ed.). New York: Aspen. p. 236. ISBN 9780735578319. 
  15. ^ a b c d e f g Brenner v. Manson, 383 U.S. 519 (1966).
  16. ^ a b c Juicy Whip v. Orange Bang, 185 F.3d 1364 (Fed. Cir. 1990)
  17. ^ Ex parte Murphy, 200 U.S.P.Q. 801 (Bd. Pat. App. & Int. 1977)
  18. ^ Newmann v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989).
  19. ^ a b In re Brana, 51 F.3d 1560 (Fed. Cir. 1995).
  20. ^ Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. cir. 2005).
  21. ^ Busch v. Jones, 184 U.S. 598 (1902).
  22. ^ In re Dillon, 919 F.2d 688 (Fed. Cir. 1990).

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