Utility (patentability requirement)

Not to be confused with Utility patent or Utility model.
Patent law
Overviews
Procedural concepts
Patentability requirements and related concepts
Other legal requirements
By region / country
By specific subject matter
See also

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 and "useless" otherwise.[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.

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.[citation needed] 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.[citation needed] 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 test (see below).[citation needed]

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.[6]

European patent law and Patent Cooperation Treaty instead of utility use the term industrial applicability.[7] Although it serves a similar purpose as the US utility and patentable subject matter requirements, it is more narrow in practice.[citation needed]

  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 DEPARTMENT OF COMMERCE - National Oceanic and Atmospheric Administration
  6. ^ The Patentee's ManualvBeing a Treatise on the Law &practice of Letters Patent, Especially Intended for the Use of Patentees and Inventors, 1853 p. 25 (public domain)
  7. ^ Under the European Patent Convention, see for instance Article 57 EPC.