Talk:Utility (patentability requirement)

2006

The discussion of utility within the article is misleading and incorrect, at least under U.S. law.

For a full discussion of the utility requirement under 35 U.S.C. 101 (excerpted below):

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2107_01.htm#sect2107.01

"Deficiencies under the "useful invention" requirement of 35 U.S.C. 101 will arise in one of two forms. The first is where it is not apparent why the invention is "useful." This can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966); In re Ziegler, 992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir. 1993). The second type of deficiency arises in the rare instance where an assertion of specific and substantial utility for the invention made by an applicant is not credible."

A "substantial utility" defines a "real world" use. The following are examples of situations that require or constitute carrying out further research to identify or reasonably confirm a "real world" context of use and, therefore, do not define "substantial utilities":

(A) Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved;

(B) A method of treating an unspecified disease or condition;

(C) A method of assaying for or identifying a material that itself has no specific and/or substantial utility;

(D) A method of making a material that itself has no specific, substantial, and credible utility; and

(E) A claim to an intermediate product for use in making a final product that has no specific, substantial and credible utility.

An invention that is "inoperative" (i.e., it does not operate to produce the results claimed by the patent applicant) is not a "useful" invention in the meaning of the patent law. See, e.g., Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989). Examples of incredible utility include perpetual motion machines and time machines. — Preceding unsigned comment added by Kansas1051 (talk • contribs)

2011

This article was flagged in 2006 as being very problematic (see the note [above]). In February 2011, Patent Law students at Hofstra Law School improved the article as a class assignment.

Iplawprof (talk) 16:58, 10 February 2011 (UTC)