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Prospective Utility: A New Interpretation of the Utility Requirement of Section 101 of the Patent Act |
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Nathan Machin |
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| This Comment attempts to reconcile the Constitution, the Patent Act, and court decisions addressing the utility requirement of patent-ability. The author identifies the following precepts behind the utility requirement: the goal of the patent system is to promote the progress of the useful arts; the word "useful" in section 101 of the Patent Act should be interpreted reasonably; and the current definition of "useful" creates a broad class of "useless" inventions, some of which are more useless than others. Based on these precepts, the current system is deficient. In place of the current system, the author proposes the "prospective utility doctrine" as a better formula for determining utility. This doctrine differs from current definitions of utility in three major ways. First, it defines usefulness as promoting the progress of the useful arts. Second, it allows an applicant to establish utility by demonstrating that a person of ordinary skill in the art would reasonably believe that an invention has a reasonable chance of being matched with a significant use in the foreseeable future. Third, it allows the patent applicant to present evidence of commercial success as evidence of utility. Unlike the current utility requirement, which requires special rules to be applied to certain classes of inventions, the prospective utility requirement applies a uniform set of requirements to all inventions. The prospective utility requirement may also be used to address the persistent problem of nominal utility, in particular with respect to the current controversy surrounding the patenting of human gene fragments without known functions. | |
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Copyright
© 1999 by California Law Review, Inc. |
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