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Utility §101 Outline

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This is an extract of our Utility §101 document, which we sell as part of our Patent Law Outlines collection written by the top tier of Harvard Law School students.

The following is a more accessble plain text extract of the PDF sample above, taken from our Patent Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Utility (SS 101) If you haven't shown utility in SS 101, ALSO fails SS 112 under disclosure because haven't disclosed a useful invention. Utility -- SS 101 - "New and useful"
? Dovetails with SS 112 Four different components to the Utility Requirement
? Beneficial Utility: Not Illegal in all 50 States. Ex/ Gambling technology used to be illegal except in Vegas. Can't patent nuclear technology. Can't patent human beings (AIA) --- stem cells?
?????"Practical Utility" o Specific Utility: Have a specific use for the invention
? How specific does it need to be? "Anti-tumor properties" not specific enough, but listing a specific cancer would be.
? Not enough to give a fake/throw-away utility. No paperweights. Basically, are you telling the truth?
? Fisher: If the asserted utility can be true for a vast class of inventions, not specific enough.
? Important in biotech/pharma, don't really know what they'll be good for necessarily. o Credible Utility:
? Do not generally have to prove a certain use. Burden of Proof on the PTO to show that the invention won't work for a certain purpose.
? BUT Life Sciences/Drugs/Diagnostics/etc.: Patentees need to provide some evidence, depending on the invention. Experiments: in vitro or in vivo. Not necessary to provide human experiments. o Substantial Utility:
? Invention needs to have immediate real-world benefits to the public.
? Cases that DON'T meet it: An invention that has no use but is the subject of an inquiry to find its use; a process for creating something that has no use as of yet;
? Research Tools are patentable; Objects of Research are not. (ESTs a weird in between, but not patentable because a very specific research tool, don't know what that thing is doing.)
? Fuzzy in the research tool/research intermediary space (Fisher)
** Utility requirement is about when you grant the patent
? Economic debates among academics come down to the vision of when patents should be granted. Beneficial Utility Need not be the BEST, just useful. Inventions that are UNIVERSALLY illegal and/or harmful are likely to fail usefulness showings.
? Lowell (D. Mass 1817) o Invention: New kind of pump

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