What is a well-established utility in patent law?
A well-established utility in patent law is one that meets specific criteria as defined by the USPTO. According to the MPEP, An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or…
Read MoreHow does the USPTO evaluate the credibility of an asserted utility?
The USPTO evaluates the credibility of an asserted utility based on the presumption that an applicant’s assertion of utility is true, unless there is reason to doubt it. The MPEP states: As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought…
Read MoreHow many specific utilities must an applicant assert for a claimed invention?
An applicant need only assert one credible specific utility for the claimed invention to satisfy the utility requirement under 35 U.S.C. 101 and 35 U.S.C. 112. The MPEP states: an applicant need only make one credible assertion of specific utility for the claimed invention to satisfy 35 U.S.C. 101 and 35 U.S.C. 112; additional statements…
Read MoreHow can an applicant respond to a rejection based on lack of utility?
When faced with a rejection based on lack of utility, an applicant has several options to respond. According to the MPEP: An applicant can do this using any combination of the following: amendments to the claims, arguments or reasoning, or new evidence submitted in an affidavit or declaration under 37 CFR 1.132, or in a…
Read MoreWhat is a prima facie case for lack of utility and how is it established?
A prima facie case for lack of utility is an initial showing by the USPTO that the claimed invention lacks utility. To establish this, the USPTO must: Make a prima facie showing that the claimed invention lacks utility Provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing The…
Read MoreWhat is the focus of the utility requirement in patent law?
The focus of the utility requirement is on the claimed invention. As stated in the MPEP, The claimed invention is the focus of the assessment of whether an applicant has satisfied the utility requirement. This means that each claim must be evaluated individually for compliance with the utility requirement under 35 U.S.C. 101. Generally, a…
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