Utility (patent) - History and Development

History and Development

Lowell v. Lewis established the primary focus of utility in United States patent law until the twentieth century. It defined a useful invention as one that is not “frivolous or injurious to the well-being, good policy, or sound morals of society.” Specifically, "he word ‘useful’ ... is incorporated into the in contradistinction to mischievous or immoral." This concept of utility has since been renamed “beneficial utility” and is defined to exclude from patentability anything immoral or deceitful. The USPTO and courts no longer consider beneficial utility nor the deceitful or immoral qualities of inventions, beginning with, for example, cases sustaining the patentability of a slot machine in 1977, and drink machines with decorative reservoirs that did not contain the drink actually dispensed. However, the USPTO and courts continue to consider whether or not an invention has a definable use at the time of application, excluding inventions that are not operable, a requirement of utility that the invention do what is claimed.

As a result of the new technologies and new fields from which patent applications come, the United States Supreme Court has fashioned a higher bar of utility, known as specific utility. In one case, the Court found that a steroid still in development was not useful in the sense used in the patent law, because it had no defined use at the time of the application. "A patent is not a hunting license," the Court stated. It is “not a reward for the search, but compensation for successful conclusion.” This standard for utility cannot be met until a “specific benefit exists in currently available form.” In In re Brana, United States Court of Appeals for the Federal Circuit has ruled that utility requirement for biomedical invention does not require formal approval by the Food and Drug Administration.