Utility (patent)
Encyclopedia
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. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or inoperative devices such as perpetual motion machines.
The patent examiners guidelines require that a patent application
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.
European patent law
does not consider utility as a patentability criterion. Instead, it requires that to be patentable an invention must have industrial applicability
.
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 claim
s, 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...." However, "the presence of some inoperative embodiments does not necessarily render a claim invalid as lacking utility." 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." 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."
706.03(a)(II))
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." Practical or specific utility is the requirement for an invention to have a particular purpose.
in 1977, and drink machines with decorative reservoirs that did not contain the drink actually dispensed. 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.
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. 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. "A patent is not a hunting license," the Court stated. It is “not a reward for the search, but compensation for [the search’s] successful conclusion.” This standard for utility cannot be met until a “specific benefit exists in currently available form.” 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
.
, 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. The invention must possess utility at the time of application.
, a court will not assume that an item has utility. A utility does not need to be obvious to the user. A patented item can be shown to have utility independent of patents granted for other inventions. 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.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, utility is a patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
requirement. As provided by , an invention is "useful" if it provides some identifiable benefit and is capable of use. The majority of inventions are usually not challenged as lacking utility, but the doctrine prevents the patenting of fantastic or inoperative devices such as perpetual motion machines.
The patent examiners guidelines require that a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
expresses a specific, credible, and substantial utility. Rejection by an examiner usually requires documentary evidence establishing a prima facie
Prima facie
Prima facie is a Latin expression meaning on its first encounter, first blush, or at first sight. The literal translation would be "at first face", from the feminine form of primus and facies , both in the ablative case. It is used in modern legal English to signify that on first examination, a...
showing that there is no specific, substantial, and credible utility.
European patent law
European patent law
European patent law covers a wide range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations....
does not consider utility as a patentability criterion. Instead, it requires that to be patentable an invention must have industrial applicability
Industrial applicability
In patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this...
.
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.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
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO). Operability protects against fraudulent and fantastic inventions that do not work.
If an invention does not work as described in the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s, 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...." However, "the presence of some inoperative embodiments does not necessarily render a claim invalid as lacking utility." 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." 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."
Beneficial utility
Beneficial utility was first recognized as a requirement in United States patent law in the 1817 case Lowell v. Lewis; 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”. However, subsequent patents were granted to devices that might be 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 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 ProcedureManual of Patent Examining Procedure
The Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates...
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 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 steroidSteroid
A steroid is a type of organic compound that contains a characteristic arrangement of four cycloalkane rings that are joined to each other. Examples of steroids include the dietary fat cholesterol, the sex hormones estradiol and testosterone, and the anti-inflammatory drug dexamethasone.The core...
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." Practical or specific utility is the requirement for an invention to have a particular purpose.
History and development
Lowell v. Lewis 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. 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 machineSlot machine
A slot machine , informally fruit machine , the slots , poker machine or "pokies" or simply slot is a casino gambling machine with three or more reels which spin when a button is pushed...
in 1977, and drink machines with decorative reservoirs that did not contain the drink actually dispensed. 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.
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. 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. "A patent is not a hunting license," the Court stated. It is “not a reward for the search, but compensation for [the search’s] successful conclusion.” This standard for utility cannot be met until a “specific benefit exists in currently available form.” In In re Brana, United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
has ruled that utility requirement for biomedical invention does not require formal approval by the Food and Drug Administration
Food and Drug Administration
The Food and Drug Administration is an agency of the United States Department of Health and Human Services, one of the United States federal executive departments...
.
Burden of proof during prosecution
During patent prosecutionPatent prosecution
Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...
, 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
Person having ordinary skill in the art
The person having ordinary skill in the art , the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction found in many patent laws throughout the world...
. 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.
Novelty vs. utility
Unlike noveltyNovelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....
, a court will not assume that an item has utility. A utility does not need to be obvious to the user. A patented item can be shown to have utility independent of patents granted for other inventions. 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.
See also
- Diamond v. DiehrDiamond v. DiehrDiamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
- Reduction to practiceReduction to practiceIn United States patent law, the reduction to practice is a concept meaning the embodiment of the concept of an invention. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding....
- State Street Bank v. Signature Financial Group
- Sufficiency of disclosureSufficiency of disclosureMost patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
- Utility modelUtility modelA utility model is an intellectual property right to protect inventions. This right is available in a number of national statutes, as described below...