The Utility Requirement

To satisfy the requirements of Title 35, Section 101 it is not only necessary to demonstrate that the subject matter of the invention is patentable, but the patentee is also required to demonstrate that the claimed invention is “useful” for some purpose. This statement of utility, while necessary, can be made either explicitly or implicitly. The utility requirement finds its foundation in the belief that an invention that is inoperative is not a “useful” invention within the meaning of §101 and, therefore, does not deserve patent protection. For a claimed invention to violate the utility requirement it must be “totally incapable of achieving a useful result.” Therefore, an invention that is at least partially useful will passes muster under §101 and the PTO will not issue a utility rejection.

Notwithstanding the extremely low utility hurdle, claimed inventions can and do fail the utility requirement. An invention that fails the utility requirement does so for one of two reasons. First, an applicant can fail to identify any specific utility for the invention or fail to disclose enough information about the invention to make its utility immediately apparent to those familiar with the technological field of the invention. Second, the applicant’s asserted utility for the invention is not credible. A good example of the later is an invention claiming a perpetual motion machine.

It is important to remember, however, that the PTO has the initial burden of challenging the applicants assertion of utility. This is true because the applicant’s assertion of utility in the disclosure will be initially presumed to be correct. Only if the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince the PTO of the invention’s asserted utility.

An assertion by the patentee regarding utility will be credible unless: (1) the logic underlying the assertion is seriously flawed; or (2) the facts upon which the assertion is based are inconsistent with the logic underlying the assertion. Credibility as used in this context refers to the reliability of the statement based on the logic and facts that are offered by the applicant to support the assertion of utility. One situation where an assertion of utility would not be considered credible is where a person of ordinary skill would consider the assertion to be incredible in view of contemporary knowledge and where the applicant has not provided any information to counter that which the contemporary knowledge suggests. Again, a perpetual motion machine is a good example.

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