Law - Useful

Usefulness or "utility" is one of the three cornerstones of patentability under U.S. law (the others being novelty and non-obviousness). An invention must be useful to be patentable. At a minimum, the invention must be operable as described and achieve some purpose. It must solve a technical problem. The asserted utility must be credible to a person skilled in the art. Inventions definitely lack utility if they are inoperable (e.g., involve perpetual motion), frivolous or fraudulent.

If a person skilled in the art to which the invention pertains would doubt the utility of the claimed invention as it is disclosed in a patent application, then the invention may be unpatentable. In such situations, the applicant must be able to offer evidence to rebut the challenge.

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):

MPEP 706.03(a) - Rejections under 35 U.S.C. 101
MPEP 2107 - GGuidelines for Examination of Applications for Compliance with the Utility Requirement
MPEP 2107.01 - General Principles Governing Utility Rejections
MPEP 2107.02 - Procedural Considerations Related to Rejections for Lack of Utility
MPEP 2106 - Patentable Subject Matter--Computer-Related Inventions

Return to Home

© 1998-2003 Robert M. Hunter PLLC