Making Patents Useful
64 Pages Posted: 6 Mar 2013 Last revised: 27 Jan 2014
Date Written: March 5, 2013
It is axiomatic in patent law that an invention must be useful. The utility requirement has been a part of the statutory scheme since the Patent Act of 1790. But what does it mean to be useful? The abstract and imprecise nature of the term combined with the lack of objective criteria for assessing it make utility the most malleable patentability requirement. As the invention landscape has evolved over time, the Patent Office and the courts have exploited this malleability to create technologically specific utility standards — de minimis for some inventions, but considerably more stringent for others. This has led to a bias against granting patents for entire categories of inventions. But this bias has come at a price. The extant utility requirement disconnects patent law from many of the technical communities that it serves and frustrates fundamental goals of the patent system.
This Article calls for the elimination of a standalone utility requirement. It proposes a new theory of usefulness based on the normative premise that patent law should be less concerned with useful inventions and more concerned with ensuring that the public gets a useful disclosure. This objective is best obtained not through utility, but rather through compliance with enablement and nonobviousness — patentability requirements rooted in objective, technical factors. This is the first Article to both harshly criticize utility and — by seeking to eliminate it — urge a radical rethinking of what should be included in (or removed from) the patentability calculus. It will hopefully inform the ongoing debate over patent reform and spark further discussions about the extent to which basic patent doctrines actually promote technological progress.
Keywords: patents, utility, invention, nonobviousness, innovation, disclosure, secrecy
JEL Classification: O31, O32, O33, O34, O38, O40, O48, K39
Suggested Citation: Suggested Citation