Chapter §10.01 Statutory Basis: 35 U.S.C. §101

• Jurisdiction: United States

§10.01 Statutory Basis: 35 U.S.C. §101

U.S. patent law protects patent-eligible inventions that are novel, nonobvious, and useful. A useful invention is one that satisfies the patentability requirement of utility. In other words, "useful" and "having utility" are synonymous in U.S. patent law. This chapter explores the utility requirement, which has its genesis in the constitutional goal of promoting the progress of the "useful arts."¹ Although the utility requirement is statutorily implemented through the mandate of 35 U.S.C. §101 that patentable inventions must be (among other things) "new and useful,"² the statute does not define what useful (or utility) means. Case law fills this gap.

In contrast with the novelty³ and nonobviousness⁴ requirements of patentability discussed elsewhere in this treatise, the substantive threshold for satisfying the utility requirement is relatively low.⁵ The great majority of inventions are never challenged as lacking utility. The utility disputes that do arise tend to involve inventions in the chemical and biotechnological arts. For example, satisfaction of the utility requirement is sometimes questioned when patent protection is claimed for methods of medical treatment.⁶ Utility has also been at issue in the controversy over patenting of genetic inventions and, in particular, attempts to patent genetic fragments including expressed sequence tags (ESTs).⁷

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Notes:

^[1] U.S. Const., art. I, §8, cl. 8.

^[2] 35 U.S.C. §101 (2006) (emphasis added).

^[3] See supra Chapter 7 ("Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]").

^[4] See supra Chapter 9 ("The Nonobviousness Requirement").

^[5] See Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1366 (Fed. Cir. 1999) (stating that "[t]he threshold of utility is not high: An invention is useful under section 101 if it is capable of providing some identifiable benefit.").

^[6] See infra §10.04[B].

^[7] See infra §10.04[C].