Editing Utility (patentability requirement) (section)

{{Use mdy dates|date=August 2023}}
{{Short description|Concept in United States patent law}}
{{Distinguish|Utility patent|Utility model}}
{{Patent law}}
In [[United States patent law]], '''utility''' is a [[patentability]] requirement.<ref>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))</ref> As provided by {{UnitedStatesCode|35|101}}, an invention is "useful" if it provides some identifiable benefit and is capable of use and "useless" otherwise.<ref>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....")</ref> The majority of inventions are usually not challenged as lacking utility,<ref>{{cite book |first=Janice M. |last=Mueller |title=Patent Law |page=235 |edition=3rd |year=2009 |location=New York |publisher=Aspen |isbn=9780735578319 }}</ref> but the doctrine prevents the patenting of fantastic or hypothetical devices such as [[perpetual motion machine]]s.<ref>{{cite book |last1=Merges |first1=Robert P. |last2=Duffy |first2=John F. |title=Patent Law and Policy: Cases and Materials |edition=4th |location=New York |publisher=LexisNexis |year=2008 |isbn=9781422417645 }}</ref>

The [[patent examiner]]s guidelines require that a [[patent application]] expresses a specific, credible, and substantial utility.<ref>See ''Brenner v. Manson'', 383 U.S. 519 (1966); USPTO, ''Utility Examination Guidelines,'' 66 Fed. Reg. 1092, 1098 (Jan. 5, 2001) ''available at'' [https://www.uspto.gov/web/offices/com/sol/notices/utilexmguide.pdf DEPARTMENT OF COMMERCE - National Oceanic and Atmospheric Administration]</ref> 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|date=June 2023}} 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|date=June 2023}} 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|date=June 2023}} 

One commentator explained in 1853 the rationale against ''useless inventions'' as:
<blockquote>
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.<ref>''The Patentee's ManualvBeing a Treatise on the Law &practice of Letters Patent, Especially Intended for the Use of Patentees and Inventors'', 1853 [https://books.google.com/books?id=0c4-AAAAcAAJ&q=%22useless%20invention%22 p. 25] ([[public domain]])</ref>
</blockquote>

[[European patent law]] and [[Patent Cooperation Treaty]] instead of ''utility'' use the term [[industrial applicability]].<ref>Under the [[European Patent Convention]], see for instance {{EPC  Article|57}}.</ref> Although it serves a similar purpose as the US ''utility'' and [[patentable subject matter]] requirements, it is more narrow in practice.{{Citation needed|date=June 2023}}