Guidelines for Utility Requirement for Patent Eligibility
One of the primary requirements for patent eligibility under Section 101 of the statute is that the invention be useful. While most inventions are not contested for a lack of utility, the doctrine is designed to ensure that only inventions with identifiable benefits are eligible for patent protection. This criteria therefore precludes the patentability of hypothetical or implausible designs.
The guidelines for evaluating the utility of a particular innovation described in an application have been established by the United States Patent and Trademark Office (USPTO). These criteria are that the invention be (i) credible, (ii) specific and (iii) substantial as defined in the Utility Guidelines Training Materials provided by the USPTO.
Credibility. In order to fulfill the credibility requirement, the invention must currently be able to perform the functions that are asserted in its claims. Thus, an individual skilled in the art to which the invention relates would agree that the available facts and reasoning support the utility of the invention.
Specificity. The use must be specifically tailored to the subject matter in the application. The claimed utility cannot be applicable to a large category of inventions.
Substantiality. The utility must have a “real world” application. A claimed utility that requires conducting further research to identify a class of uses for the invention would not meet the substantiality requirement.
A patent examiner’s rejection of an application for a lack of utility generally necessitates a prima facie showing that the invention lacks a credible, specific and substantial utility based on written evidence.
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