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Monday, April 19, 2010

Reinventing Usefulness

I plan to write a couple of posts about "Reinventing Usefulness," an article that I have forthcoming in the BYU Law Review. Since 1790, Congress has required that all patents must be "useful," but little attention has been given to what this term means. In fact, the word "useful" is almost never invoked anymore; instead, the patent jargon "utility" is used. Worse, utility doctrine is mostly toothless, and allows patents to issue on inventions that have no real public benefit.

In this post, I will describe three different conceptions of usefulness: operable, practical, and commercial. Only two of these conceptions are currently used. In future posts, I will suggest a better way to look at usefulness - one that was mandated by Congress nearly 170 years ago, but which was promptly ignored by the courts.

I divide usefulness into three categories: operable, practical, and commercial.

Operable Usefulness

Operable usefulness requires that a patented invention must actually achieve some intended result. Modern operable utility requirements exclude three types of inoperable inventions:

    1. Impossible inventions:  Inventions that violate the laws of nature – most notoriously perpetual motion machines – are considered inoperable.
    2. Prophetic inventions:  Inventions that could work, but that someone familiar with the subject matter would view as unworkable, are considered inoperable absent some evidence to the contrary. Untested pharmaceuticals often fall under this category.
    3. Incompletely disclosed inventions: Inventions that cannot be implemented by following the patent’s teachings are considered inoperable.  This typically arises where the inventor has left details out of the patent specification or where the claimed invention could not work as described. This type of inoperability differs from the other two because the achievement of the invention is believable even if the inventor has not described a successful result.

Practical Usefulness

Though practical usefulness dates back to 1817, the modern requirement was announced by the Supreme Court in 1966; Brenner v. Manson ruled that inventions must have some currently available specific and substantial use to satisfy section 101’s “useful” requirement. Brenner also ruled that processes that make “useless” products also lack practical utility.

There are many inventions that are useful, but only for further study. These inventions are treated as being practically useless. For example, the law denies patents on compositions of matter with no currently known use, even if a potential use might be revealed after further experimentation. When such use is revealed, the composition would have patentable practical utility.

Not all inventions have the potential for practical use, though. Some types of inventions will never exhibit practical utility. These inventions, like the pet rock, fail to “do something” no matter how much it is studied.

Commercial Usefulness

A third concept is the commercial usefulness of the invention. Courts have long ruled that inventions need not “supersede all other inventions now in practice” or even be commercially useful at all.

Many patent scholars and practitioners believe that there is another category of usefulness, namely the beneficial or “moral” utility requirement. Early (1817) influential opinions required that “the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society.”

I include moral utility as part of commercial usefulness. Though nominally grounded in morality, history has revealed a link to commerce. In essence, patents were disfavored in areas where courts desired to limit commercial innovation. Thus, inventions that change the appearance but not the function of products were not useful, gambling machines were considered non-beneficial, and courts debated the utility of guns, eventually allowing patents on them. 

Modern cases further support the inclusion of moral utility within commercial usefulness. For example, a prominent Federal Circuit opinion rejected a moral utility challenge by describing the commercial appeal of several inventions designed to deceive others. Further, because gambling is legal in several states (and thus commercially acceptable), gambling devices are now considered beneficially useful.

In short, because commercial utility is not required, moral utility is essentially ignored today; courts have stopped making judgments about what is “good” for society. Instead, they allow the market to decide which inventions are morally acceptable. Because no patentability requirement effectively regulates the commercial appeal of inventions, it is no wonder that commercially useless patents routinely issue.

Quantity v. Category

I end this post with a comment about how utility is measured. In order to be useful, a patent should exhibit usefulness in each of the categories (currently operable and practical - you can see where my argument is going). However, the quantity of usefulness is de minimis - any showing will do. The article discusses judicial and scholarly confusion that arises when category and quantity are not separated.

Others have suggested that patent quality would increase if more utility were required. I disagree for at least three reasons. First, it is impossible for patent examiners and courts to measure usefulness, especially before the patent even issues. The best one can hope for is a determination that the invention is useful at all. Second, even if you could measure usefulness, there is no systematic way to do so. For example, some inventions may be extremely useful precisely because they are less effective (and thus less costly) than currently available technology. Consider, for example, commercial v. residential strength detergents. Third, there is no reason to believe that "more" operability or practicality will increase public benefits of a patent.

That's an introduction to patentable usefulness. Proposed changes will follow.

Posted by Michael Risch on April 19, 2010 at 11:17 AM in Intellectual Property | Permalink


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Great topic - commercial utility is an interesting angle. Plus, any excuse to talk about the Juicy Whip case should not be overlooked.

Posted by: Blake Reid | Apr 19, 2010 12:10:30 PM

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