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.’” Grunenthal (Fed. Cir. 03/28/19) (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.

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