Chapter §10.05 Uspto Examination Guidelines on Utility

• Jurisdiction: United States

§10.05 Uspto Examination Guidelines on Utility

The USPTO in 2001 issued examination guidelines that interpreted the Supreme Court's 1966 Brenner v. Manson decision as requiring utility that is "specific, substantial, and credible."⁷⁵ The guidelines defined "specific and substantial utility" to mean "useful for any particular practical purpose," excluding "throw-away," "insubstantial," or "nonspecific" utilities, such as the use of a complex invention as landfill.⁷⁶ The credibility of a utility asserted by the patent applicant must be assessed from the perspective of a person "of ordinary skill in the art in view of the disclosure and any other evidence of record (e.g., test data, affidavits or declarations from experts in the art, patents or printed publications) that is probative of the applicant's assertions."⁷⁷

With regard to the credibility assessment, the USPTO "must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided that shows that one of ordinary skill in the art would have a legitimate basis to doubt the credibility of such a statement."⁷⁸ Likewise, the USPTO "must accept an opinion from a qualified expert that is based upon relevant facts whose accuracy is not being questioned; it is improper to disregard the opinion solely because of a disagreement over the significance or meaning of the facts offered."⁷⁹

When a utility asserted for a claimed invention is self-evident and not controversial, it is generally considered "well-established." According to the USPTO guidelines, a "well-established" utility exists 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 applications of a product or process), and (ii) the utility is specific, substantial, and credible."⁸⁰

A patent applicant need provide only one credible assertion of specific and substantial utility for a claimed invention in order to satisfy the utility requirement.⁸¹ Later-discovered uses of a product invention, even uses discovered by others, will inure to the patentee's benefit. For example, assume that a patent applicant claims a novel and nonobvious composition of matter X that treats disease Y. The asserted utility is specific, substantial, and credible. After the USPTO issues a patent, a third party discovers that composition X is also useful to treat an unrelated disease Z. Even...