In order for the patent application to fulfill the utility requirement, the claimed invention must be “useful” for some purpose either explicitly or implicitly. Most often the applicant will make explicit utility statement in a patent application but this is not always necessary. Utility problem usually arises in one of the two scenarios.
- Firstly why the invention is “useful”, which can occur when the applicant fail to identify nay specific and substantial utility for the invention or fail to disclose enough information about the invention to make it usefulness to make it usefulness immediately apparent to those familiar with technological field of invention.
- Second, there are rare instances where an assertion of specific and substantial utility for an invention is simple not credible.
The term “useful”, used with the reference to the utility requirement can be difficult term to understand. Where a patent applicant has set forth a specific and substantial utility, courts are reluctant to uphold a utility rejection by the patent examiners solely on the basis that the applicant’s opinion seems implausible.Indeed practical considerations require the office to rely on inventor’s understanding for his or her invention in determining whether and what regard an invention is believed to be “useful”. Notwithstanding, a utility specific to the subject matter claim is required. To understand what this means it is most helpful to contract this with or without be called a “general utility”, which is utility that would be shared across a broad class of invention. So if you were to invent a new and improved paper napkin are disposable.
In addition to having a specific utility a claimed invention must also have a substantial utility. The purpose of this requirement is to make sure that the invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. In other words, in order for an invention to have a substantial utility it must have a significant and presently available benefit. Thus, a substantial utility it must have a significant and presently available benefit. Thus a “substantial utility” defines a “real world” use. Unfortunately, utilities that require or constitute carrying out further research to identify or reasonably confirm a “real world” context of use are not substantial utilities.
Inoperative Inventions lack utility because if the invention does not work it cannot be useful. But this does not mean that the invention must work well. Even crude inventions or those that perform poorly would satisfactorily satisfy the utility environment. Thus in order for the invention to lack utility because it is inoperative the invention must not work at all. This means that the lack of utility cannot be sustained without proof of total incapacity. If an invention is only partially successful in achieving a useful result, a rejection of the claimed invention as a whole based on a lack of utility is simply not appropriate. Ordinarily when a utility claim is made that is not credible the applicant would have conducted tests and submit affidavit evidence to demonstrate to patent examiners that the invention does in fact work as described thereby overcoming utility rejection.
Utility Drafting Problem
Failure to appreciate what it means to be inoperative is a serious problem for independent inventors and novices who are representing themselves. Inventors all to frequently fail to describe versions of their inventions that do not work optimally, or that perform poorly. The trick with drafting a patent application is to define anything that will work no matter how crude no matter how defective. You want to capture everything. The only power of a patent is to prevent others from doing what is covered in the patent. If you are making money there will be others who want to do what you are doing, which should be obvious by the very real problems presented by counterfeiters, for example.
Your patent can prevent them from doing what you are doing but a strong patent will also prevent would be competitor from doing anything that is close. Think of the patent as creating a wall around your invention. You do not have to use all of what you capture/define in your patent application, but having it will create the barrier to entry that can insulate you from copyists. It may also create a licensing opportunity because it is possible that while you stick to higher end products another might want to license your rights to sell at a lower price point.