This article is written by Triveni Singal, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws, from LawSikho.com.
A patent means the exclusive rights granted to a person by the patent office of the country, which he applies to exploit his invention for a stipulated period. In India, a patent is granted for a term of 20 years from the date of filing or the priority date. In this article, we shall understand one of the most fundamental aspects of patent laws, that is, its utility requirement as understood across the globe. The requirement that the invention should be useful is called the utility requirement.
In the United States, the concept of utility is enshrined in their Constitution which bestows on Congress, the power to accord exclusive rights to inventors for the development and progress of science and useful arts. In countries like Europe and India, the utility requirement gets fulfilled if the claimed invention has industrial applicability, or is capable of industrial exploitation (both these terms are generally used interchangeably). Whatever is the understanding of utility in any country, there are always certain types of inventions that are excluded from patentability as lacking utility in nearly every jurisdiction.
- For example, the perpetual motion machine is a utility-based exclusion based on the scientific fact that perpetual motion is impossible to achieve, and thus, an invention that claims such a feature will definitely fail and thereby lacks utility. Another exclusion witnessed in some jurisdictions is based on policy grounds now.
- For example, in Europe methods of treating human and animal bodies are not patentable subject matters. The basis for such exclusion shifted from lack of industrial applicability to public health policy over the years.
The scenario in the United States of America
In the United States, three kinds of patents are recognised, vis-a-vis, utility patents, design patents, and plant patents. Our focus is on utility patents also referred to as “patents for invention.”
They are issued to inventions which are new and useful or improvements. The subject matter of a utility patent application must be useful, that is, the utility requirement must be satisfied. The Manual of Patent Examination Procedure (MPEP) served by the United States Patent & Trademark Office (USPTO) provides the examination guidelines for the utility requirement and specifies that an applicant must establish that the claim invention is useful through either exhibiting specific and substantial utility, or well-established utility. Well-established utility implies that sufficient information is disclosed about the invention such that its utility is immediately apparent to those familiar with that technological field.
Subject matter of the claimed invention
The specific utility must be specific to the subject matter of the claimed invention and not merely generally applicable to a wide range of the invention. For example, an assertion that the invention is useful to diagnose and infirmity without disclosing which disease exactly lacks specific utility, or an invention claiming to be a “chromosome marker” without disclosing its target DNA also lacks specific utility. Substantial utility means that the invention has some “real world” use. It can be established by showing that the invention can be utilized in its current form as disclosed in the application, rather than later after some pending additional research is completed. For example, an invention that would be used in the current COVID situation immediately.
The MPEP expressly specifies that inventions in various technological fields are each subject to the same legal requirements concerning utility.
Presumption is created in the application’s favour
It has been seen that when a utility has been asserted by the applicant in his application, a presumption is created in that favor. Thus, the burden of disproving utility is on the patent office, and the examiner shall treat the assertion as credible. This presumption can be rebutted if the assertion is based on seriously flawed logic. In the case of In re Fisher, the court on rejecting the patent application stated that a claimed invention whose only stated utility was use with genes that have no known use, cannot be reasonably found to meet the utility standard. This case exemplified that the requirement is met so long as the specified utility is reasonable and not an attempt to create a utility where none exists. Thus, a patent application that reveals general generic uses of a claimed invention simply assists research, lacks utility and lacks enablement.
Brenner v. Manson : dealing with the extent of specific utility
Another landmark judgment relating to practical (specific and substantial) utility was given in the case of Brenner v. Manson. It deals with the issue of the extent of specific utility a claimed invention must exhibit to fulfill the criterion. In this case, a specific use for the product was not known or disclosed by the patentee, although it was hypothesised that it could be screened for possible anticancer utility. The court 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 that “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.” The case is famous for its beacon statement “a patent is not a hunting license.”
MPEP 2107 Guidelines for Examination of Applications
As per the MPEP 2107 Guidelines for Examination of Applications for compliance with the utility requirement, if at any time during the examination, it becomes readily apparent to the examiner that the claimed invention has a well-established utility, a rejection based on lack of utility can’t be imposed. Another rule as mentioned in the guidelines is that the examiner must review the claims to determine if the applicant has asserted any specific and substantial utility that is credible. Credibility is calculated using the ordinary skills in the art with the help of the disclosures and other shreds of evidence submitted along with the application (e.g., test data, affidavits, etc.) that is probative of the applicant’s assertions. This concept is known as incredible utility. If none of the asserted utility is credible, and the invention also lacks apparent well-established utility, the claims are bound to get rejected under 35 U.S.C. 101 because the invention as claimed lacks utility. A perpetual motion machine patent application was rejected on the ground of lacking incredible utility in the case of Newman v. Quigg.
Applicability in Europe
The European Patent Convention (EPC) provides that for an invention to be patentable it must be new, must involve an inventive step, and must be susceptible to industrial application. Thus, the expression “susceptible of industrial application” is Europe’s version of utility requirement and means that the invention is capable of being made or used in any kind of industry. In the case of E.I. du Pont de Nemours & Co., the ground for rejecting the claims was that the subject matter was directed to a cosmetic process not susceptible to industrial application. The invention was however found to comply with Article 57 of EPC because it could be used by enterprises whose object is to beautify the human or animal body, and such enterprises in the cosmetic field are part of the industry since the word “industry” implies that an activity is carried out continuously, independently and for financial gain.
Utility requirement of a patent in India
As per the Patents Act, 1970, an invention comprises any new product or process involving novelty, inventive step, and is capable of industrial application. The phrase “capable of industrial application” has further been defined under Section 2(1)(ac) of the Act as being made or used in industry. Thus, it is similar to the requirement of “susceptible of industrial application” as per the European Patent Convention.
Two landmark Indian judgments on the utility requirement
1. Indian Vacuum Brake Co., Ltd. v. E.S. Luard (1925)
In this case, the court stated that under the patent law the term “utility” is used in a special sense and not in an abstract sense. Thus, mere usefulness would not be sufficient to support a patent. Another landmark judgment of Young and Neilson v. Rosenthal & Co. (1884) was referred to as well, which had defined “utility” as an invention better than the proceeding knowledge of the trade as to a particular article.
2. Cipla Ltd. v. F.Hoffmann-La Roche Ltd. & Anr. (2015)
In this recent judgment, the court stated that as per the definitions of “invention” and “capable of industrial application” as given in the Act, an invention must have commercial use or manifestation. Furthermore, even though an alleged invention may not be a final product, the same will be patentable only if it has some commercial viability. Thus, it is not the product that is the focus of attention but the actual physical substance created which has the potential of a commercial manifestation.
Thus, we see that though the terms used are different in the US, Europe, and India to describe the concept, all these jurisdictions have remarkably similar approaches to the utility requirement of a patent. In Canada on the other hand, the doctrine of sound prediction is employed to determine the utility requirement of a patent. As per the doctrine, inventions that were arrived at unexpectedly or accidently and cannot be reproduced reliably lack utility. Thus, the applicant has to reveal either actual working embodiments of the invention or soundly predicted ones to show utility. This doctrine is unconcerned with whether the claimed invention can actually perform the promise of the patent. Instead, it focuses on whether the applicant could have reasonably inferred that the claimed invention was suitable for the promise of the patent based on the evidence available at the filing or priority date. The Patent Cooperation Treaty International Search and Preliminary Examination Guidelines (PCT Guidelines) provide international backing to the concept. The guidelines consider an invention to be industrially applicable if it has specific, substantial, and credible utility.
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