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 MoreWhat is the standard for utility in research tools and intermediate products?
The USPTO applies the same utility standards to research tools and intermediate products as it does to other inventions. According to MPEP 2107.01: “Labels such as ‘research tool,’ ‘intermediate’ or ‘for research purposes’ are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.” The MPEP emphasizes that…
Read MoreWhat is the utility requirement for patents?
The utility requirement for patents stipulates that a claimed invention must be useful or have a utility that is specific, substantial, and credible. The MPEP states: “A claimed invention must be useful or have a utility that is specific, substantial and credible.“ This requirement ensures that patents are granted only for inventions that have a…
Read MoreWhat is the utility requirement in patent law?
The utility requirement in patent law refers to the necessity for an invention to have a specific and substantial credible utility. This requirement is established by 35 U.S.C. 101 and 35 U.S.C. 112(a) (or pre-AIA 35 U.S.C. 112, first paragraph). The Manual of Patent Examining Procedure (MPEP) provides guidelines for examining applications for compliance with…
Read MoreHow does the USPTO handle “incredible” or “wholly inoperative” inventions?
The USPTO treats “incredible” or “wholly inoperative” inventions as lacking utility under 35 U.S.C. 101. According to MPEP 2107.01: “An invention that is ‘inoperative’ (i.e., it does not operate to produce the results claimed by the patent applicant) is not a ‘useful’ invention in the meaning of the patent law.” However, the MPEP clarifies that…
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 MoreWhat is the “substantial utility” requirement in patent law?
The “substantial utility” requirement in patent law refers to the need for an invention to show a significant and presently available benefit to the public. According to MPEP 2107.01: “[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some…
Read MoreWhat is the “specific utility” requirement in patent law?
The “specific utility” requirement in patent law refers to the need for an invention to provide a well-defined and particular benefit to the public. According to MPEP 2107.01: “A ‘specific utility’ is specific to the subject matter claimed and can ‘provide a well-defined and particular benefit to the public.’ In re Fisher, 421 F.3d 1365,…
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…
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