Editing Utility (patentability requirement) (section)

== Utility criteria ==
In considering the requirement of utility for patents, there are three main factors to review: operability of the invention, a beneficial use of the invention, and practical use of the invention.{{Citation needed|date=June 2023}}

===Operability===
The importance of operability as a requirement of claims is disputed.

Janice Mueller claims that an inoperable invention may fail to satisfy the enablement requirement under 35 U.S.C. § 112 because "an inventor cannot properly describe how to use an inoperable invention...."<ref>{{cite book |first=Janice M. |last=Mueller |title=Patent Law |page=245 |edition=3rd |year=2009 |location=New York |publisher=Aspen |isbn=9780735578319 }}</ref> However, as authority Ms. Mueller's textbook cites to another textbook, Landis on Mechanics of Patent Claim Drafting, which itself cites section 2173.05(l)<ref>{{cite book |first=Robert C. |last=Faber |title=Landis on Mechanics of Patent Claim Drafting |edition=3rd |year=1990 |publisher=Practising Law Inst |isbn=9780872240070 |url-access=registration |url=https://archive.org/details/landisonmechanic00fabe }}</ref> in the [[Manual of Patent Examining Procedure]]. Section 2173.05(l) has not been part of the Manual of Patent Examining Procedure since the 1990s. The most recent pronouncement of the Manual of Patent Examining Procedure is 2107.01:

<blockquote>Situations where an invention is found to be "inoperative" and therefore lacking in utility are rare, and rejections maintained solely on this ground by a Federal court even rarer. In many of these cases, the utility asserted by the applicant was thought to be "incredible in the light of the knowledge of the art, or factually misleading" when initially considered by the Office. ... Other cases suggest that on initial evaluation, the Office considered the asserted utility to be inconsistent with known scientific principles or "speculative at best" as to whether attributes of the invention necessary to impart the asserted utility were actually present in the invention. ... However cast, the underlying finding by the court in these cases was that, based on the factual record of the case, it was clear that the invention could not and did not work as the inventor claimed it did. Indeed, the use of many labels to describe a single problem (e.g., a false assertion regarding utility) has led to some of the confusion that exists today with regard to a rejection based on the "utility" requirement.</blockquote>

===Beneficial utility===
Beneficial utility became established as a requirement in United States patent law in 1817 as a result of ''[[Lowell v. Lewis]]'' (1 Mason. 182; 1 Robb, Pat. Cas. 131 Circuit Court, D. Massachusetts. May Term. 1817.). The utility criterion established by this case is, as Justice [[Joseph Story]] wrote in the Court's decision, that, to be patentable, an invention must be "useful" and must "not be frivolous or injurious to the well-being, good policy, or sound morals of society".<ref name="lowell">{{Cite web|url=http://cyber.law.harvard.edu/IPCoop/17lowe.html|title = Lowell v. Lewis}}</ref> In spite of this ruling however, patents continued to be granted for devices that could be deemed immoral (e.g. gambling devices, see, e.g., Brewer v. Lichtenstein<ref>278 F. 512 (7th Cir. 1922)</ref> and ''Ex parte Murphy''<ref>200 U.S.P.Q. 801 (P.T.O. Bd. App. 1977)</ref>) or deceitful (see, ''[[Juicy Whip, Inc. v. Orange Bang, Inc.]]'' (dealing with a juice dispenser that arguably deceived the public into believing that the liquid seen in the attached reservoir was that which was being dispensed)).<ref>185 F.3d 1364 (Fed. Cir. 1999); 51 U.S.P.Q.2d (BNA) 1700</ref> In ''Juicy Whip'', the Court of Appeals for the Federal Circuit put an end to the requirement: "Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted…we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public."([[Juicy Whip Inc. v. Orange Bang Inc.]], 185 F.3d 1364, 1367–68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999), see also [[Manual of Patent Examining Procedure]] 706.03(a)(II))

===Practical utility===
The last utility category is practical or specific utility. According to Mueller, "to be patentable an invention must have some real-world use."<ref>{{cite book |first=Janice M. |last=Mueller |title=Patent Law |page=236 |edition=3rd |year=2009 |location=New York |publisher=Aspen |isbn=9780735578319 }}</ref> The utility threshold is relatively easy to satisfy for mechanical, electrical, or novelty inventions, because the purpose of the utility requirement is to ensure that the invention works on some minimal level.{{Citation needed|date=June 2023}} However, the practical or specific utility requirement for patentability may be more difficult to satisfy for chemical or biological inventions, because of the level of uncertainty in these fields. The [[United States Supreme Court]] in ''[[Brenner v. Manson]]'' (in 1966) held that a novel process for making a known [[steroid]] did not satisfy the utility requirement, because the patent applicants did not show that the steroid served any practical function. The Court ruled, "... a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute."<ref name="brenner-1966">Brenner v. Manson, 383 U.S. 519 (1966).</ref> Practical or specific utility is the requirement for an invention to have a particular purpose.<ref name="brenner-1966"/>