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Incredible Utility

Posted Friday, February 24, 2012 by Mike Cicero

Recently, I blogged about the patent system’s Best Mode requirement and the system’s underlying policy that requires the public to receive something in return when a patent is granted. Another statutory requirement that stems from this policy consideration is that an invention must be “useful” in order to qualify for patent protection. 35 U.S.C. § 101. The actual language of § 101 holds that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Typically when the courts examine this statute there is a question as to whether a certain invention is patent eligible. More specifically, there is usually an issue as to whether the invention is a process, a machine, an article of manufacture, or a composition of matter.” (For more on patent eligibility read Mike Gibbons related post here). Besides patent eligibility, there is another requirement of § 101 known as the utility requirement which created from the statutes inclusion of the word “useful.”

The utility requirement actually stems from the Constitution of the United States in which Article I, Section 8 authorizes Congress to provide exclusive rights to inventors to promote “useful arts.” Rejections for failure to meet the utility requirement are rare but do occur in two situations. The first is when both the inventor fails to point out a specific and substantial utility and a person of ordinary skill in the art would be unable to recognize a utility from the specification. The utility need not be practical or commercially feasible; it need only have some nominal or bare utility. For example, a claim to a solid gold fishing lure would probably satisfy the utility requirement even if nobody would risk losing a thousand dollar lure to a halibut. The second situation where inventions have failed to meet the utility requirement occurs when the utility claimed by the applicant is wholly inoperative or incredible. Here, incredible is used not in the sense of “wow, what an amazing invention,” but rather “that utility cannot exist because what you are claiming is impossible.” A rejection in such a situation makes sense because if an invention as claimed is wholly inoperative and therefore does not achieve its claimed result then it cannot be said to be useful as required by § 101. Further, if an invention claims to achieve a result that is undisputed as impossible and the applicant cannot prove otherwise it is not useful for the same reason.

One type of invention that has come before the patent office on numerous occasions and has often been rejected due to lack of utility is the perpetual motion machine. In fact, purported perpetual motion machines have been filed and claimed so often that the Patent Office has made it official policy that models should be submitted during examination to satisfy the examiner that the device is operable. See MPEP 608.03. A model is required because perpetual motion is widely accepted in the scientific community to violate the undisputed laws of thermodynamics. Therefore, it is considered to be impossible by most. However, if it could be truly achieved perpetual motion would have enormous utility. If society had the ability to get more energy out of a system than the system takes in our energy crisis would cease to exist. Even if we could merely get out exactly the same amount as was put in, no more and no less, the energy storage capabilities would be invaluable. With such an enormous benefit that such a machine would bring it is no wonder that perpetual motion has been an inventor’s Holy Grail for centuries.

In Newman v. Quigg, the inventor brought an action due to the denial of a patent on this application entitled “Energy Generation System Having Higher Energy Output Than Input.” 877 F.2d 1575, 1577 (1989). In this case the inventor had favorable testimony from an expert that the evidence was overwhelming that the inventor had successfully built a machine that seemingly produced useful energy. Id. During an appeal from the initial utility rejections, the Board upheld the examiner’s rejections because “perpetual motion is impossible for it violates either the first or second law of thermodynamics.” Id. Eventually, the applicant was required to submit a prototype of the invention to the National Bureau of Standards (NBS) for testing. The NBS found that the invention did not achieve the claimed result and, accordingly, the application was rejected under the utility requirement of § 101 and additionally § 112 for lack of enablement. The § 112 rejection follows naturally because one cannot be enabled to use an invention that is found to be useless under § 101.

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