Utility (Sec. 101)

  • BASICS: Sec. 101 requires a “new and useful” process, etc. Claimed inventions must have “substantial utility” and “specific benefit exist[ing] in currently available form.” Brenner (U.S. 03/21/1966) (“But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.”) “Require[] a claimed invention to have a specific and substantial utility to satisfy § 101. … To satisfy the ‘substantial’ utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public…. An asserted use must also show that that claimed invention can be used to provide a well-defined and particular benefit to the public.” In re Fisher (Fed. Cir. 09/07/05) (aff’g rejection of claims for lack of utility). “A patent has utility if the alleged invention is capable of providing some identifiable benefit presently available to the public. A patent fails to satisfy the utility requirement under 35 U.S.C. § 101 only if the invention is ‘totally incapable of achieving a useful result.’” (aff’g pharmaceutical patent not invalid for lack of utility). Cannot patent mere research proposal, idea with hypothetical uses, or mere object of scientific research. In re ‘318 Patent (Fed. Cir. 09/25/09). Rarely, is this a successful defense in an infringement suit. See generally MPEP 2107.1.